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May 2012 Attorney at Law Magazine

Patentability after Bilski

The machine-or-transformation test helps determine
whether a process is patentable if it’s tied to a
particular machine or apparatus or if it transforms
a particular article into a different state or thing.
But, in its landmark Bilski decision last year, the
U.S. Supreme Court held that it isn’t the sole test for
determining whether a business method or similar
process is patentable.
In light of that ruling, the U.S. Patent and Trademark
Office (USPTO) issued its Interim Guidance for
Determining Subject Matter Eligibility for Process
Claims in View of Bilski v. Kappos. The guidance
provides valuable insight on the types of claims
that might qualify for patents.
3 factors favoring patentability
The USPTO’s guidance identifies three major
factors that favor patentability because they either
satisfy the machine-or-transformation test or
provide evidence that the process has been
practically applied:
1. The claim describes a machine or
transformation (either expressly or inherently)
and the machine or transformation can be
specifically identified. The machine or
transformation must also meaningfully limit the
execution of the method’s steps — as opposed to
only insignificantly contributing to the execution —
and the machine must implement those steps.
In addition, the original article needs to be
specifically identifiable, while the transformed
article must undergo a change in state or thing.
For example, the article would have an objectively
different function or use. Last, the transformed
article needs to be an object or substance, as opposed
to a concept such as a contractual obligation or
mental judgment.
2. The claim is directed toward applying a law of
nature. The law of nature must be practically applied
and that application of the law of nature needs to
limit the execution of the steps meaningfully.
3. The claim is more than a mere statement of a
concept. Rather, the claim must describe a particular
solution to a problem to be solved and implement
a concept in some tangible way. Finally, the
performance of the steps needs to be observable
and verifiable.
Factors opposing patentability
The USPTO’s guidance also lists several factors that
weigh against patentability because they indicate
a process is merely an abstract idea. First, a claim
may fail if there’s no recitation of a machine
or transformation (either express or inherent).
Even an insufficient description of a machine or
transformation may limit or prevent patentability.
One example is when the involvement of the machine
or transformation with the steps is merely nominally,
insignificantly or tangentially related to the
performance of the steps (for example, data
gathering). Other examples include when:
n The claim merely describes a field in which the
method is intended to be applied,
n The machine is generically described so that it
covers any machine capable of performing the
claimed step(s),
n The machine is merely an object on which the
method operates, and
n The transformation involves only a change in
position or location of the article.
Patentability is also limited when the “article”
is merely a general concept — including basic
economic practices or theories, basic legal theories,
mathematical concepts, mental activity,
interpersonal interactions, teaching concepts, human
behavior or instructions on how business “should
be” conducted.
What’s more, a claim can’t be directed to an
application of a law of nature, nor can it
monopolize a natural force or patent a scientific fact
by, for example, claiming every mode of producing
an effect of that law of nature. If the law of nature
is applied in a merely subjective determination,
the claim may be denied. And if the law of nature
is merely nominally, insignificantly or tangentially
related to the performance of the steps, the claim
may also not pass muster.
Additionally, it’s critical that a claim not be a mere
statement of a general concept. A claim may also be
deemed unpatentable under the “general concept”
factor if:
n 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),
n The claim states only a problem to be solved,
n The general concept is disembodied, and
n The mechanism(s) by which the steps are
implemented is subjective or imperceptible.
Finally, if use of the concept, as expressed in the
method, would effectively grant a monopoly over the
concept, patentability will likely be denied.
Beyond patentability
Although the guidance doesn’t specifically
address software applications, many observers are
watching carefully to see how the revised
standards will affect these products. And, of course,
patentability is only a threshold issue. An invention
that’s deemed patentable also must satisfy the
Patent Act’s other requirements — including
novelty, nonobviousness, definiteness, adequate
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