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Patent Office Guidance Post Bilski

Posted Wednesday, August 11, 2010 by Jim Ruttler

The Patent Office has issued a memo to its examining corp detailing new examination principles post Bilski. Prior to Bilski being decided by the U.S. Supreme Court, the Federal Circuit (appellate court) held that in order for an invention to be patentable it had to be tied to a machine or result in some physical transformation. The U.S. Supreme Court reviewed the case and clarifed that the machine or transformation test was not the sole test for patentability. Instead, the Supreme Court held that any product or process is patentable so long as it isn’t an abstract idea. The Court further indicated that the machine or transformation test was a useful starting point when making determinations of patent eligibility, but that inventions that failed this test might still be patentable. The Patent Office has since issued guidance to its examiners to assist with complying with this Supreme Court ruling. Generally, the guidance indicates that patent eligibility should not be a focus of examination except in egregious cases and that any recitation of a machine or transformation in the claims will overcome any doubt of patent eligibility. There are some other less than clear factors that may be considered as well, which are detailed in the memo (http://www.uspto.gov/patents/law/exam/bilskiguidance27jul2010.pdf).

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