According to a news source, the U.S. Patent and Trademark Office (USPTO) has been struggling with how to determine whether an invention is patenteligible given the lack of clear guidance from the U.S. Supreme Court.

USPTO General Counsel Bernard Knight, speaking at an international intellectual property law symposium on November 9, 2012, reportedly noted that while subject-matter eligibility is the “hottest area” of intellectual property law and is critical for the high-tech and biotech industries, the Supreme Court’s failure to provide more than limited statements on the issue combined with deeply divided Federal Circuit rulings have been an obstacle for the office.

“We have 7,000 examiners that have to make patent eligibility decisions every day, and it’s very difficult to do that when the only guidance from the Supreme Court is that software is not patent-eligible if it’s an abstract idea,” Knight said. “That standard was the takeaway from the high court’s 2010 Bilski v. Kappos decision, which ruled that the so-called machine-or-transformation test used by the Federal Circuit to determine patent eligibility was not the sole test, but only a useful clue.” Knight contends that the ruling frustrated the USPTO because not only did it fail to provide guidance about what should be deemed patent-eligible, but it undermined a test that examiners had found useful. “That was a great test for use because we have to make sure we apply the law consistently and that was a pretty easy test for us to apply,” he said.

Mayo v. Prometheus did not improve the situation, according to Knight. The court ruled that a diagnostic blood test was not patent-eligible because it involved observing a natural correlation between a drug and metabolite levels in the blood, and USPTO does not agree with the Court’s analysis, he said. See Law360, November 9, 2012.