There is a follow-up to the Supreme Court’s decision involving Bilski. The Patent Office has issued guidelines to the examiners on how to determine whether there is patentable subject matter. This is of particular interest to computer related inventions.
As you may recall, the Supreme Court endorsed the Federal Circuit’s “machine or transformation test” to determine whether there is patentable subject matter. But the Supreme Court held that this is not the only test. Instead the Court applied a broader “abstract idea” test, stating that if a patent claim is directed to an abstract idea the claim is not directed to patentable subject matter.
As a practical matter, the Patent Office guidelines have not changed anything. Generally, if the Federal Circuit “machine or transformation test” is satisfied, it is highly likely the Patent Office will find that there is patentable subject matter. If the guidelines are not satisfied then there will be an uphill battle trying to persuade the examiner that the claims are directed to patentable subject matter.
The guidelines can be found at 75 Fed. Reg. 43922
