Wednesday, December 30, 2009

USPTO Issues Temporary Post-Bilski Test for Software Patents

On December 15, 2009, the USPTO designated the Ex Parte SRINIVAS GUTA and KAUSHAL KURAPATI opinion as precedential, whereby it provides interim examining guidance to Patent Examiners when determining whether a software or business method patent application is directed to eligible patentable subject matter.  A copy of the case is here.  The guidelines are provided in an effort to provide interim guidance until the US Supreme Court issues its decision in In re Bilski.

The Bilski case is pending review by the US Supreme Court and a decision is expected this Spring.  According to the Court of Appeals in Bilski, Bilski's method claim was patent-ineligible because it did not “transform any article to a different state or thing.”

The GUTA case provides the following two-prong test:

(1) Is the claim limited to a tangible practical application, in which the
mathematical algorithm is applied, that results in a real-world use
(e.g., “not a mere field-of-use label having no significance”)? and

(2) Is the claim limited so as to not encompass substantially all
practical applications of the mathematical algorithm either “in all
fields” of use of the algorithm or even in “only one field?”

If the machine (or article of manufacture) claim involves a mathematical
algorithm and fails either prong of our two-part inquiry, then the claim is not
directed to patent-eligible subject matter under § 101.

Clarification of the Bilski test and now the new USPTO test will be welcomed from the US Supreme Court.