On July 27, 2010, the USPTO published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (“the Interim Guidelines”). 75 Fed. Reg. 43922-43928 (July 27, 2010). The Interim Guidelines provide guidance to Patent Examiners for determining subject matter eligibility of method claims under 35 U.S.C. § 101, in view of the Supreme Court’s June 28, 2010 decision in Bilski v. Kappos concerning the so-called “machine-or-transformation” test (“the M-or-T test”).

In a preface to the Interim Guidelines, the USPTO noted that the Supreme Court found the M-or-T test to be a “useful and important clue” and “investigative tool” for deciding whether a claimed invention is directed to a patent-eligible method. According to the USPTO, the Supreme Court’s primary objection was the characterization of the M-or-T test as the “sole test” for patent-eligibility. The USPTO makes particular note of the fact that, to date, no court has ever ruled that a method claim lacking a recitation of a machine or transformation was patent-eligible, although the Supreme Court held open that possibility. Thus, as will be seen below, the M-or-T test continues to play a significant role in an Examiner’s analysis of method claims for compliance with Section 101.

The Interim Guidelines present factors to be considered when determining whether method claims are directed to an unpatentable abstract idea. The factors are intended to be useful examples that are neither exclusive nor limiting, and the USPTO recognizes that the factors may be modified to take into account new developments in case law and other new considerations that arise, particularly for emerging technologies. Examiners are instructed to consider whether a method claim as a whole is directed to an abstract idea, and to consider both factors that weigh in favor of patent-eligibility and those that weigh against it.

The four high-level factors identified by the Interim Guidelines are: (1) whether the claimed method involves or is executed by a particular machine or apparatus, (2) whether the performance of the claimed method results in or otherwise involves a transformation of a particular article, (3) whether the claimed method involves an application of a law of nature, and (4) whether a general concept, principle, theory, plan, or scheme is involved in executing the steps of the method.

Regarding the first factor, when a method claim expressly or inherently recites a machine or apparatus, the Examiner should consider (i) the particularity of the recited machine or apparatus (i.e., whether the machine or apparatus can be specifically identified), (ii) whether the machine or apparatus actually implements the method steps, as opposed to being an object acted upon by the method, and (iii) whether the use of the machine or apparatus imposes meaningful limits on the execution of the claimed method steps or merely constitutes a field-of-use or extrasolution activity. The recitation of a particular machine, or one that implements the claimed steps or meaningfully limits the execution of the steps, weighs in favor of patent-eligibility. On the other hand, the recitation of no machine or a generic machine, or one that is merely an object on which the method operates or otherwise is merely nominally or tangentially related to the claimed steps (e.g., used merely for data gathering or to indicate a field-of-use), weighs against patent-eligibility.

Regarding the second factor, when a transformation occurs in the claimed method, the Examiner should consider (i) the particularity of the transformation, (ii) the particularity of the recited article (i.e., whether the article can be specifically identified), (iii) the type or extent of the transformation (e.g., producing a different function or use, as opposed to merely a different location), (iv) the nature of the article that is transformed (i.e., whether it is an object or substance, as opposed to a concept such as a contractual obligation or mental judgment), and (v) whether the transformation imposes meaningful limits on the execution of the claimed method steps or merely relates to a field-of-use or extrasolution activity. The recitation of a particular transformation or one that meaningfully limits the execution of the claimed steps, the recitation of a transformation that involves a particular article or involves transformation of a physical object or substance, and/or the recitation of a transformation that involves a change in state that provides a different function or use of the article, weighs in favor of patent-eligibility. On the other hand, the recitation of a transformation that merely involves a change in position or location of an article, or one that is merely nominally or tangentially related to the performance of the steps, or the recitation of a transformation where the transformed “article” is merely a general concept, weighs against patent-eligibility.

Regarding the third factor, when a claimed method recites an application of a law of nature, the Examiner should consider (i) the particularity of the application (e.g., whether the claim generically recites an effect of a law of nature or claims every mode of accomplishing that effect), (ii) whether the claimed method recites an application of a law of nature that solely involves subjective determinations (e.g., ways to think about the law of nature), and (iii) the extent to which the recited application imposes meaningful limits on the execution of the claimed method steps (e.g., whether its involvement is merely extrasolution activity or a field-of-use). The recitation of an application of a law of nature that involves a particular practical application, or one that meaningfully limits the execution of the steps, weighs in favor of patent-eligibility. On the other hand, the recitation of a general application that would monopolize a law of nature, or the recitation of an application that merely involves subjective determinations (e.g., application of a law of nature to a particular way of thinking about, or reacting to, the law of nature) or that contributes only nominally or tangentially to the performance of the steps, weighs against patenteligibility. Regarding the fourth factor, the Interim Guidelines list the following non-limiting examples of general concepts: basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing), basic legal theories, mathematical concepts, mental activity (e.g., forming a judgment, observation, evaluation, or opinion), interpersonal interactions or relationships, teaching concepts (e.g., memorization, repetition), human behavior (e.g., exercising, wearing clothing, following rules or instructions), and instructing how business should be conducted. When a general concept such as these is involved in executing the claimed method steps, the Examiner should consider (i) the extent to which the claimed use of the concept would preempt its use in other fields, (ii) the extent to which the claim is so abstract that it covers both known and unknown uses of the concept, (iii) the extent to which the claim would cover all possible solutions to a particular problem, (iv) whether the concept is disembodied or implemented in a tangible way, and (v) the mechanism(s) by which the steps are implemented (e.g., whether the performance of the process is observable and verifiable as opposed to subjective or imperceptible). Thus, the recitation of a particular solution to a problem, or the recitation of a concept such that it is implemented in some tangible way or such that the performance of the claimed method steps is observable and verifiable, weighs in favor of patent-eligibility. On the other hand, the recitation of the use of a concept in a manner that would effectively grant a monopoly over the concept, the recitation of the concept in a way that is disembodied or that merely states a problem to be solved, or the recitation of a concept such that the mechanism(s) for implementing the steps are subjective or imperceptible or such that both known and unknown uses of the concept are covered and can be performed through any existing or future-devised machinery (or even without any apparatus), weighs against patent-eligibility.

As is evident from the foregoing, particularly from the first and second factors, the Interim Guidelines retain the M-or-T test as a significant part of an Examiner’s analysis to determine patent-eligibility. Accordingly, practitioners should keep that test, as well as the other factors mentioned above, at the forefront of their thinking when drafting method claims.