USPTO Publishes New Bilski Guidance With Broad-Based Inquiry

USPTO Publishes New Bilski Guidance With Broad-Based Inquiry

The USPTO posted new guidance today regarding the recent Bilski decision from the US Supreme Court (http://edocket.access.gpo.gov/2010/pdf/2010-18424.pdf). This is a much more detailed presentation than the earlier one-page guidance for patent examiners.

The new guidelines refer to themselves as a "supplement," but no longer focus heavily on the machine or transformation (MoT) test.   Instead, the newest guidance suggests more of a "totality of the circumstances" approach, with several different factors identified to be used to determine if a method is patent-eligible/patent-ineligible.  No one factor is to be determinative. Moreover, the examiner is cautioned to present an analysis of the factors supporting patent-ineligibility when stating a prima facie case.

The new guidelines also impress upon examiners the need for compact examination - all rejections should be raised in the first action, rather than simply a rejection under 101 for patent-ineligibility, except in extreme cases.

The guidance points out that because it is not substantive rule making, it does not have the force and effect of law and "any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable." As such, while the guidance includes a request for comments, the request is not intended to turn this into a formal rulemaking procedure.