Almost immediately after the Supreme Court handed down the Bilski<\/a> decision Robert W. <\/a>Bahr<\/a>, Acting Associate Commissioner for Patent Examination Policy sent a memorandum to the patent examining corps<\/a> which gave guidance as to how the USTPO<\/a> examiners should interpret the case.<\/p>\n
Bahr summarized what the Supreme court decided in the short memo:<\/p>\n
I tried to figure out what the existing guidelines are for the USPTO regarding the examination of a process claim. I found another memorandum dated January 7, 2009<\/a>, by John J. Love<\/a>, Deputy Commissioner for Patent Examination Policy, addressed to the Technology Center Directors and the Patent Examining Corps which explained that the Bilski <\/strong>machine-or-transformation <\/strong>test<\/strong> for a method claim is whether or not the claimed method is:<\/p>\n
\n
- Tied to a particular machine or apparatus; or<\/li>\n
- Transforms a particular article to a different state or thing.<\/li>\n<\/ol>\n
The “guidelines” go on to say that there are two corollaries to the machine-or-transformation test :<\/p>\n
\n
- First, a mere field of use limitation <\/strong>is generally insufficient to render otherwise eligible method claim patentable. This means the machine or transformation test must impose and meaningful limits on the method claim scope to pass the test; and<\/li>\n
- Second, insignificant extra-solution activity<\/strong> will not transform an unpatentable principle into a credible process. This means for citing a specific machine work or a transformation of a specific article is an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.<\/li>\n<\/ul>\n
Other related posts:<\/u><\/strong><\/p>\n
Senator Leahy Uses Bilski to Push Patent Reform<\/a><\/p>\n
Bilski vs. Kappos Decision<\/a><\/p>\n