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PTO Issues Post-Bilski Section 101 Guidelines

June 29, 2010

The Patent and Trademark Office sent a memorandum to the Patent Examining Corps providing interim guidance on how to examine applications in light of the Supreme Court’s Bilski decision.  Basically the memorandum directs that the Examiners should continue to apply the machine-or-transformation test.  If the claims satisfy that test they likely satisfy § 101.  If the claims fail the test, the Examiner should issue a rejection and put the burden on the applicant to show why the claims are not directed to an abstract idea.

Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101.  If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea.  If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea.  If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.

Therefore, at least within the Patent Office, the primary test for whether claims satisfy § 101 will remain the machine-or-transformation test.

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