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USPTO's Short-Term Bilski Approach: "Reject First, Ask Questions Later"

By Peter Zura

After the Bilski decision was rendered by the Supreme Court, the USPTO issued a press release, stating that the PTO "will be issuing guidance further interpreting the decision as soon as possible" and that the PTO will be issuing interim guidance for the examining corps in the meantime.

The interim guidelines state that the machine-or-transformation test should continue to be used as a "tool", but if there is no "clear indication" that the invention is something other than an abstract idea, the examiners should reject the application.  At this point, applicants have the burden to explain why the invention is not 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-transfonnation 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.

Of course, this approach to examination appears to be contrary to Oetiker which held that "the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.? In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (see MPEP 2106(IV)(D)).

Read download the memo here (link)

Hat tip: Hal Wegner

Full post as published by Two-Seventy-One Patent Blog on July 07, 2010 (boomark / email).