Before I write another word, I want to recognize and applaud the intellectual and logistical effort it must have taken for Director Kappos and his helpers to put together six pages of “Interim Guidance For Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43922 (July 27, 2010), (attached at end of post) “for its personnel to use when determining subject matter eligibility under U.S.C 101…The Office is especially interested in receiving comments regarding the scope and extent of the holding in Bilski.” The Office deserves our attention.

In my last post, I considered the difficulty in setting standards by which to determine whether or not a claim to a process is an abstract idea or rather does it involve concrete technology. The Interim Guidance (an official “Notice”) tackles this question head on. The Notice cites Chakrabarty as endorsing an expansive view of what constitutes a “new and useful process,” limited by the exceptions “laws of nature, physical phenomena and abstract ideas.” The Notice observes that “the Office had used the ‘abstract idea’ exception in cases where a claimed ‘method’ did not sufficiently recite a physical instantiation…Thus, the Bilski claims were said to be drawn to an ‘abstract idea’ despite the fact that they included steps of initiating transactions. The ‘abstractness’ is in the sense that there are no limitations as to the mechanism for entering into the transactions.” Notice at 93924. (Such limitations create the instantiation, a word I had to look up.)

The Notice discusses, and goes on to outline, four primary factors weighing toward patent eligibility and four primary factors weighing against it. The first step in the “pro” column is the express or inherent recitation of a machine or transformation. Likewise, the first and second “con” steps are no, or insufficient recitation, of a machine or transformation (again, express or inherent). Then it gets interesting. Factor three of the “pro” list is that the claim is directed toward a practical application of a law of nature, that limits the execution of the steps. The “con” factor is that the claim is not directed to the application of a law of nature and would monopolize a natural force or patent a scientific fact. A “con” example might be a claim, not to a diagnostic assay for a vitamin deficiency or cancer, but to the underlying fact that human blood contains certain amounts of homocysteine or PSA.

The fourth “pro” factor begins to cross into even less intellectually stable realms: “The claim is more than a mere statement of a concept.” The “con” factor mirrors it, “The claim is a mere statement of a general concept…use of the concept, as expressed in the method would effectively grant a monopoly over the concept.” But on reflection, these are more practical factors then they might first appear. Every prep/pros practitioner has encountered inventors who want to patent concepts or bright ideas, as opposed to inventions. Such a general concept might be stated as correlating mutations in genes to a propensity to develop cancer. How about “A car that runs on water as fuel.” I once had a professor approach me to patent his idea to develop a pig with organs that would not give rise to a rejection response when transplanted into humans. This was indeed a bright idea, but he had no idea how to create such a pig. This sort of “invention” was so common in the early days of biotechnology, that I wrote in the margins of my copy of Chemical Patent Practice (J. L. White): “You don’t patent ‘concepts’, you patent inventions; e.g., ‘power transfer’ vs. the gears that do it.” BNA PCTJ vol. 34, 264 (1987); Perkin-Elmer Corp. v Westinghouse Electric Corp.” I will leave it to you to check the cites.

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