Supreme Court Rejects Machine or Transformation Test

In its long-awaited opinion, the Supreme Court rejected the Court of Appeals decision in Bilski v. Kapos that method patents must be either tied to a particular machine or transform an article from one state to another.  While the so-called machine or transformation test remains an  important analytical tool for examining method patents, it cannot be used as a requirement for patent eligibility.  The Court emphasized that while the definition of “process” in the Patent Act includes business processes, they remain subject to rejection using existing patent rules including novelty, obviousness and the adequate disclosure requirement.  In fact, although the Court rejected the machine or transformation requirement, it nevertheless found Mr. Bilski’s patent claims non-statutory, suggesting that courts will continue requiring business processes to meet the current high bar for patentability.  Arguably what constitutes patentable subject matter is now less clear and defined, although the new more flexible standard should be more adaptable to advances in information technology going forward.

Patent Prosecution Highway to Accelerate Examination

The U.S. Patent Office in partnership with several foreign patent offices will fast track application examination under the Patent Prosecution Highway (PPH) program.  Favorably reviewed applications in their countries of first filing may enter accelerated examination for corresponding foreign claims upon request.  The U.S. Office is partnered with Australia, Canada, Denmark, the European Patent Office, Finland, Germany,  Japan, Korea, Singapore and the United Kingdom currently.  Additionally, a pilot PCT program allows applications to enter accelerated examination based on favorable PCT opinions, but exists only between the U.S., European Patent Office, Japan and Korea.  Before electing to use the PPH, applicants should be aware that non-corresponding claims may not use the accelerated process, and accelerated examination may be outweighed by the likelihood of favorable action by a non-PPH office.  Applicants may also be surprised by the speed of PPH claim allowance in instances where accelerated examination is not a necessity.

Patent Examination Multi-track System Proposed

In 2009 patent applicants waited an average 36 months after filing for examination.  Although a few applications can be advanced out of turn, these must either fall into narrow specialized categories, or be filed using the existing expedited examination process.  Many practitioners disfavor the current expedited case system due to its increased prosecution cost, and because the mandatory examination support documents can inadvertently affect patents in litigation.  In response, the Office proposed on June 3, 2010 a three-track system using tiered filing fees.  Under the proposal, applicants seeking a faster path to examination could pay elevated fees and advance out of turn.  The system, intended to take effect in 2011, was designed to address budget shortfalls and the Office’s current case backlog.  Intended system benefits include a slower examination for inventors still perfecting or trying to market their inventions, and a faster examination option for others.  Critics fear that poorer inventors may be left behind by the system, and also argue that companies might use slower examination to hide technology from competitors although the current 18 month publication rule helps avoid this problem.  The Patent Office is currently seeking comments on the plan through its website.

Contact Us