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The Patent Office applies In re Bilski to processes eligible for patenting(07/15/10)
Interim instructions for patent examiners encourage applicants to explain why their claimed inventions are not directed to abstract ideas even if they fail the machine or transformation test.
On June 28, 2010, the acting associate Commissioner for Patent Examination Policy, Robert Bahr, gave preliminary guidance to patent examiners for applying the In re Bilski decision that the Supreme Court handed down that day. These instructions will affect how previously-filed applications will be examined and how new applications should be drafted.
Under the interim instructions, examiners should continue to examine patent applications for compliance with the machine or transformation test that the Bilski court said was no longer the sole test for patent eligibility. A claimed process is likely to be patent-eligible if it meets this test unless the examiner perceives a “clear indication that the process is directed to an abstract idea.” The examiner should reject it as being not being patent-eligible under Section 101 of the Patent Code should the claimed process not meet the machine or transformation test, unless there is a clear indication that the process is not directed to an abstract idea. The applicant will have the opportunity to explain why a claimed process, rejected as being patent-ineligible, is not directed to an abstract idea. Drafting a patent application to show that a claimed process is not merely directed to an “abstract” idea will help avoid later difficulties.
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