In a Federal Register notice today, the USPTO has published interim guidance regarding how examiners are to assess whether an application's patent claims fall within the scope of patentable subject matter defined in § 101 in light of the Supreme Court's decision in Bilski.  Many patent attorneys were concerned when the initial memo to examiners was released, suggesting the machine-or-transformation test was a burden-shifting mechanism and leaving it to an applicant who did not meet the test to prove the claims fell within § 101.  The new guidance should allay these concerns somewhat, and comments are sought on both the guidelines and to provide examples of claims that are perceived to fall both within and without § 101.

The notice provides a background of the Bilski decision, particularly in the context of abstract ideas, given that was the basis for the Court finding Bilski's claims unpatentable.  It then provides details on how examiners are to evaluate claims for § 101 compliance and provides factors to be considered.  Of particular note is the following passage:

Section 101 is merely a coarse filter and thus a determination of eligibility under § 101 is only a threshold question for patentability.  Sections 102, 103, and 112 are typically the primary tools for evaluating patentability unless the claim is truly abstract . . . .

The guidelines also provide how the examiner can make a § 101 rejection such that it can be responded to: 

If a claim is rejected under § 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea. Specifically identifying the factors used in the analysis will allow the applicant to make specific arguments in response to the rejection if the applicant believes that the conclusion that the claim is directed to an abstract idea is in error.

The Notice lists various factors that an examiner can use to assist in the determination.  On the whole, this approach should assist both applicants and examiners in addressing § 101 issues in a productive manner, although there will in most cases be room for argument regarding the relative weighing of the factors.

Click below for a listing of the factors identified in the notice as relevant to the § 101 analysis.

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In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination.  This is the latest in Director Kappos' attempts to control application pendency at the Office.

The "prioritized examination" track would be much like the current accelerated examination system in that final action on the application would be targeted to be within one year of filing.  However, applicants would not have to provide the onerous examination support document with the application.

Similarly, the slow track would permit applicants to elect a delay of up to 30 months before the application is placed in the examination queue.  There is no indication in the press release as to whether applications filed under this track would receive a break on the filing fee.  However, this track would seem to be a favorable choice for companies that would prefer their patents to issue later (and therefore, with patent term adjustment, expire later).  

There will be a Federal Register notice with additional details tomorrow [UPDATE (6/4):  click here for the Federal Register Notice], and a public hearing is set for July 20 at the USPTO. 

To read the full press release, click here.

In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start of the United Nations Framework Convention on Climate Change.

In a Federal Register notice today, the specifics of the program were provided in more detail.  The applicable technologies include those that materially (1) enhance the quality of the environment, (2) contribute to discovery or development of renewable energy resources; (3) contribute to the more efficient utilization and conservation of energy resources; or (4) contribute to greenhouse gas emission reduction.  The requirements for environmental quality enhancement applications are defined in MPEP § 708.02(V).  The "renewable energy resources" include "hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources."  Inventions that deal with more efficient utilization and conservation of energy "include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances."  Greenhouse gas reducing inventions include those "that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)."

As to the technical requirements for the petition, they include:

• The petition must be filed in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009) 
• The application must be classified in one of the classes identified in the Federal Register notice
• The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds
• The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements 
• The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met
  
• The petition must be electronically filed on or before December 8, 2010, and at least one day before a first office action is mailed (which may be a restriction requirement)
• The petition must include a request for early publication and the publication fee
  

As this is only a pilot program, only the first 3,000 applications will be elegible for accelerated examination on this basis.  However, the USPTO anticipates extending the program if it is successful.

For USPTO the press release, click here.  For the Federal Register notice with more details of the program and the requirements to participate, click here.  USPTO Director Kappos also provides this entry on his official blog on the subject.

In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations.  This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued.  The summary of the notice:

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to revise the rules of practice for patent cases pertaining to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications (Claims and Continuations Final Rule). The Office is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

The USPTO and GlaxoSmithKline (one of the plaintiffs who sought injunctive relief against implementation of the rules) have joined in a motion to dismiss the appeal and vacate the district court decision.  Tafas, the other plaintiff, has not joined the motion regarding the vacatur of the district court decision, wanting it to stay on the books as a limit on future rulemaking attempts by the USPTO.

To read the press release, click here.

To read the full Federal Register notice with background history on the rules and the underlying litigation, click here.

In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application.  As a result, the court reversed the Board of Patent Appeals and Interferences.

At issue was the inventor's own manuscript.  It was undisputed that the manuscript disclosed the invention and was filed with the U.S. Copyright Office more than a year before the filing date of the application.  The Board held this, combined with the ability to search the Copyright Office records by title, provided sufficient evidence of public accessibility to qualify the manuscript as prior art under § 102(b). 

The Federal Circuit reversed.  After surveying the applicable case law, the court held the copyright office automated catalog was insufficient to render the manuscript publicly accessible because it only permitted searching by the author's last name or the first word of the title of the work.  Further, while the copyright office records were spearately indexed by two commercial search providers that permitted keyword searching, there was no evidence in the record of when these commercial search providers would have included the relevant records.  As a result, the court vacated the Board's decision and remanded, noting that the rejection may be reinstated if there was sufficient proof of when the commercial databases indexed the manuscript.

More detail of In re Lister after the jump.

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This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski. 

The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis.  Click below to review the materials in more detail.

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In a press release, the USPTO announced the availability of the e-Office Action program for patent applications.  Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR.  This avoids the time delay of mailing the office action, thereby getting notice of the action sooner than previously possible (and also has the benefit of reducing mailing and processing costs at the USPTO).  If the office action is not downloaded within 7 days, the USPTO would then send a postcard notifying of the office action.

The program is opt-in, so current applicants and attorneys will continue to receive paper copies of office actions for the time being.  However, it seems likely that in the foreseeable future the USPTO will implement this program for all applications.

Useful links:

• Press release
• e-Office Action program page
• Private PAIR (to opt-in or out of the program)
  

In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules.  Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at least for the reasons given by the district court.

In the order, the court set forth the briefing schedule:

• August 5:  Appellants' additional briefs due
• August 25:  Appellee's additional brief due
• September 1:  Reply briefs due

Oral argument will be set at a later date.  To read the order granting en banc review, click here.

According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office.  The nomination does not yet appear on the White House's nominations and appointments page (Update:  here is the While House press release).  Back in May, it was speculated that Mr. Kappos may be selected for the position.

Mr. Kappos served as vice president and general counsel for IBM and is on the board of directors of the AIPLA.  Other resources on Mr. Kappos:

• IP Watchdog
• "Why IBM's Kappos is Unfit to be the Next PTO Director"
  

HT:  271 Patent Blog.

This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules.  The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue.  In spite of this conclusion, the court holds the limit on continuation applications conflicts with 35 U.S.C. § 120, and is therefore invalid.  The remaining rules, however, do not conflict with the patent statutes (or at least they do not conflict for the reasons provided by the district court).

The Federal Circuit provided a summary of its disposition and the issues to be addressed on remand:

III. CONCLUSION
For the foregoing reasons, we conclude that the Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority. However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid. Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.

Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand. This opinion does not decide any of the following issues: whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

To read the full decision, click here.  Judge Prost wrote the majority opinion; Judge Bryson wrote a concurrence, and Judge Rader dissented.

Update (3/24):  The USPTO has released a brief statement on the issue (emphasis added):

On March 20, 2009, the Federal Circuit issued a decision addressing (i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO’s rulemaking authority and (ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency’s rulemaking authority. The Court also concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Court remanded several issues to the district court. The litigation remains pending. The Final Rules will not be implemented at this time.