On 7/27/2010, the USPTO (United States Patent and Trademark Office) issued interim guidance for the patent examining corps to use when determining subject matter eligibility under 35 U.S.C. § 101 in view of the recent decision by the United States Supreme Court in Bilski v. Kappos. The USPTO is seeking public comment on this interim guidance and intends to issue final guidance after evaluating the public comments.
The memo to the patent examining corps can be found on the USPTO Web site at the link below:
http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf
Below is the quick reference from the memo.
101 Method Eligibility Quick Reference Sheet
The factors below should be considered when analyzing the claimas a whole to evaluate whether a method claim is directed to an abstract idea. However, not every factor will be relevant to every claim and, as such, need not be considered in every analysis. When it is determined that the claim is patent-eligible, the analysismay be concluded. In those instances where patent-eligibility cannot easily be identified, every relevant factor should be carefully weighed before making a conclusion. Additionally, no factor is conclusive by itself, and the weight accorded each factor will vary based upon the facts of the application. These factors are not intended to be exclusive or exhaustive as there maybe more pertinent factors depending on the particular technology of the claim. For assistance in applying these factors, please consult the accompanying “Interim Guidance” memo and TC management.
Factors Weighing Toward Eligibility:
• Recitation of a machine or transformation (either express or inherent).
o Machine or transformation is particular.
o Machine or transformation meaningfullylimits the execution of the steps.
o Machine implements the claimed steps.
o The article being transformed is particular.
o The article undergoes a change in state or thing (e.g., objectively different function or use).
o The article being transformed is an object or substance.
• The claim is directed toward applying a law of nature.
o Law of nature is practically applied.
o The application of the law of nature meaningfully limits the execution of the steps.
• The claim is more than a mere statement of a concept.
o The claim describes a particular solution to a problemto be solved.
o The claim implements a concept in some tangible way.
o The performance of the steps is observable and verifiable.
Factors Weighing Against Eligibility:
• No recitation of a machine or transformation (either express or inherent).
• Insufficient recitation of a machine or transformation.
o Involvement of machine, or transformation, with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied.
o Machine is generically recited such that it covers anymachine capable of performing the claimed step(s).
o Machine is merely an object on which the method operates.
o Transformation involves only a change in position or location of article.
o “Article” is merely a general concept (see notes below).
• The claim is not directed to an application of a law of nature.
o The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature.
o Law of nature is applied in a merely subjective determination.
o Law of nature is merely nominally, insignificantly, or tangentiallyrelated to the performance of the steps.
• The claim is a mere statement of a general concept (see notes below for examples).
o Use of the concept, as expressed in the method, would effectivelygrant a monopolyover the concept.
o Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus.
o The claim only states a problem to be solved.
o The general concept is disembodied.
o The mechanism(s) by which the steps are implemented is subjective or imperceptible.
