Public comments on USPTO’s post-Bilski, patentable subject matter guidelines are due September 28, 2009.

In response to the revised standards for patent eligibility set forth by the U.S. Court of Appeals for the Federal Circuit in In re Bilski (see IP Update, Vol. 11, No. 11; certiorari granted), the U.S. Patent and Trademark Office (USPTO) issued revised guidelines for examination of patent claims under Section 101 at the end of August 2009. The guidelines are available here.

Before the release of these guidelines, the USPTO Board of Patent Appeals and Interferences (BPAI) appeared to take a narrow view of patent eligibility under the Bilski “machine-or-transformation” test. In contrast, the new guidelines appear to adopt a more moderate position, at least for computer-related or computer-implemented subject matter.

“Beauregard” claims, for media bearing computer instructions, continue to be recognized as a patent-eligible article of manufacture, if directed to a non-transitory, tangible computer readable storage medium. In view of the recent Nuijten decision, holding per se “signals” ineligible under Section 101, the USPTO officially considers the phrase “computer readable medium” too broad for eligibility. This is based on the position that if a claim as a whole covers both ineligible and eligible subject matter, it is to be considered ineligible.

Also, the USPTO officially accepts computer-implemented method claims, where such claims “clearly convey that [a] computer is programmed to perform the steps of the method.” Specifically, the USPTO accepts that a programmed computer is a “particular machine” under the Bilski test—an issue that had expressly been left unresolved by the Bilski decision.

Of further interest for computer-implemented inventions, the USPTO noted that “electronic data that represents a physical object or substance” can serve as a transformed article under the transformation prong of the Bilski test. However, such data “should be more than an abstract value,” and an eligible transformation requires more than mathematical manipulation—transformed data must have a different function or be suitable for a different use.

Additionally, the guidelines provide further guidance for applicants and examiners as to the general framework and details of examination for Section 101 subject matter eligibility. A number of charts and clarifications are offered that appear to provide greater predictability as to how the Bilski test is to be applied.

On September 17, 2009, the USPTO issued a request for comments on the guidelines, with a due date of September 28, 2009. Comments should be sent to or by facsimile to the attention of Caroline D. Dennison at +1 571 273 0125. No public hearing will be held on the guidelines.

Practice Note

Post-Bilski eligibility for “business method” patent applications continues to appear to be difficult to establish, except for the express acceptance of certain computer-implemented method claims. The USPTO acknowledges that the guidelines are currently “interim instructions,” pending a decision by the Supreme Court in Bilski v. Kappos, which is scheduled for argument November 2009.