July 2010 Issue

After Bilski:  The USPTO Response and Claim Drafting


Moreover, the Court encouraged the “Federal Circuit’s development of other limiting criteria” consistent with the Patent Act and Supreme Court precedent.  Id. at 16.  The Court, however, was unable to find support in the Patent Act for a categorical exclusion of all business method inventions.  Id. at 11.

Although the U.S. Patent and Trademark Office (USPTO) has indicated that it will be issuing more complete guidance soon, the USPTO has responded to the Bilski decision for now by instructing its examiners to continue applying the machine-or-transformation test to determine whether an invention is a process under Section 101.  Memorandum from Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy, U.S. Patent & Trademark Office, to the Patent Examining Corps (June 28, 2010), available at  According to the USPTO’s guidance, if a claimed method satisfies the test, the method is likely patent eligible unless there is a clear indication that the claimed method is directed to an abstract idea.  Id.  If, however, the claimed method fails the machine-or-transformation test, examiners are instructed to reject the claimed method under Section 101 unless it is clear that the claimed method is not directed to an abstract idea.  Id

Despite the possibility of additional patent eligibility tests being created in the future, the USPTO currently intends to use the machine-or-transformation test as an initial gauge for the patent eligibility of processes.  Accordingly, applicants should be sure to include a number of claims that clearly satisfy that test.  To do so, applicants should ensure the claimed method is sufficiently tied to a machine or apparatus (e.g., computers or other devices) by including the machine or apparatus throughout the claim.  A mere recitation of a machine or apparatus in a claim’s preamble or a field-of-use limitation may not be sufficient.  Instead, applicants may include limitations drawn to how the machine or apparatus performs steps of the claimed method and/or interaction between multiple machines.

Alternatively, a claim may include one or more limitations drawn specifically to the transformative aspects of an invention.  For example, a method claim may include a limitation claiming transformed data as a physical phenomena, such as, for example, a visual depiction.  As another example, claims directed to diagnostic methods may include a step directed to administering a treatment to a patient or conducting a diagnostic test that transforms a test sample.  Providing a claim with a number of transformative limitations makes clear to examiners that the claimed invention is not merely directed to an abstract idea or natural phenomenon.  As a further alternative, applicants may include article-of-manufacture claims drawn to, for example, a computer program product including a computer usable medium having a computer readable program code embodied therein.

Furthermore, pre-Bilski guidance by the USPTO indicated that applicants should avoid limitations where a machine or transformation is only present in an insignificant extra-solution activity (i.e., an activity that is not central to the purpose of the invented method).  For example, a mid-solution step of “entering bids in the record” or a pre-solution step of “performing a plurality of clinical laboratory tests on an individual” may not be enough to pass the machine-or-transformation test.  Stated differently, merely “reciting a specific machine or a particular transformation of a specific article in an insignificant step, such as data gathering or outputting, is not sufficient to pass the test.”  Memorandum from John J. Love, Deputy Commissioner for Patent Examination Policy, U.S. Patent & Trademark Office, to Technology Center Directors and the Patent Examining Corps (Jan. 7, 2009), available at dapp/opla/documents/bilski_guidance_memo.pdf.  Instead, applicants should ensure the use of a particular machine or the transformation of a particular article imposes a meaningful limit on the claim’s scope.