Fogg & Powers LLC

The United States Supreme Court handed down the much anticipated decision in Bilksi v. Kappos¹on June 28, 2010. The Bilski decision concluded that the “Machine or Transformation” test is not the only test for patent eligibility. The question now facing a patent applicant is what other tests is the USPTO going to apply? The first substantive answer to that question was provided by the USPTO on July 27, 2010 in a memo to the examining corp². The memo provides a list of factors to consider in determining patent eligibility. The factors can be grouped into two tests: the Bilski “Machine or Transformation” test and a modified version of the “Useful, Concrete and Tangible” test³. We will continue to monitor Board decisions to gain further insight into how the USPTO is applying the Bilski decision. Our findings will be published in the near future.

1 Bilski v. Kappos, No. 08-964, slip op. (U.S. June 28, 2010)

2 Memo to Patent Examining Corps, Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos, July 27, 2010.

3 See MPEP §2106(IV)(C)(2)