In response to the Bilski decision recently rendered by the Supreme Court of the United States (see IP Update, Vol. 13, No. 7), the U.S. Patent and Trademark Office (USPTO) published interim guidelines for examination of patent claims under § 101 in the Federal Register. The interim guidelines supplement previous examination instructions issued on June 28, 2010 (the same day of the Bilski decision) and August 2009 (see IP Update, Vol. 12 No. 9). The above guidance, along with a “quick reference sheet,” is available online at http://www.uspto.gov/patents/announce/bilski_guidance.jsp.

The interim guidelines return the USPTO to determining whether claims are directed to an abstract idea. In reaching this determination, examiners are instructed to consider a number of factors the USPTO considers to be indicators of eligibility or ineligibility, a number of which extend beyond the machine-or-transformation test. However, the guidelines reflect a view at the USPTO that the machine-or-transformation test remains the most useful tool for determining eligibility of method claims, even if it is not the “exclusive” test. For example, the memorandum provided to the patent examining corps indicates that it is “in some rare cases, factors beyond those relevant to machine-or-transformation may weigh for or against a finding that a claim is directed to an abstract idea.”

Factors identified beyond the machine-or-transformation test include whether a claim is directed to a practical application of a law of nature and whether a claim is a “mere statement of a general concept.” According to the guidelines, a claim is more than a general concept if it describes a particular solution to a problem, tangibly implements a concept or if its performance is observable and verifiable. Examples of what the USPTO suggests are ineligible general concepts include basic economic practices or theories (such as hedging, insurance, financial transactions and marketing), basic legal theories (such as contracts) and instructing how business should be conducted. Applicants may rebut an examiner’s determination with arguments and evidence.

Included in the Federal Register Notice is a request for public comments. In particular, the USPTO is interested in identifying claims that demonstrate exceptions to the machine-or-transformation test and how a narrower category of ineligible subject matter related to business methods might be defined. Public comments on the USPTO’s post-Bilski patentable subject matter guidelines are due November 9, 2010.