The U.S. Patent and Trademark Office (USPTO) has posted on its Web site a memorandum to guide its examiners as they consider whether a claimed method constitutes a patent-eligible process in light of In Re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008).

As a result of these guidelines, certain types of process or method claims may no longer be patentable or may require a more narrow scope. The U.S. Supreme Court is now considering whether to review the Bilski case.

The USPTO memorandum, issued January 7, 2009, and posted March 5, notes that the Manual of Patent Examining Procedure (MPEP), Section 2106, has been modified to incorporate the machine-or-transformation test, reiterated by Bilski. Further, the memorandum states that guidelines are being redrafted to reflect Bilski and other recent developments in the law.

The U.S. Court of Appeals for the Federal Circuit, sitting en banc, held in Bilski on October 30, 2008, that the machine-or-transformation test was applicable for patent-eligible process claims under 35 U.S.C. Section 101, and rejected the "useful, concrete and tangible" test, defined in State Street Bank v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998).

For information on Bilski and its impact on patent subject matter eligibility for processes, please contact any member of Ballard Spahr's Patents Group.


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