According to the Patent Office, the machine-or-transformation test is alive and well By Marc S. Kaufman Nixon Peabody attorneys will be continuously monitoring the state of the law and patent practice in view of Bilski v. Kappos and will issue periodic Alerts as new information comes available. This Alert is the second in the series following Monday’s ruling. In wake of the recent Supreme Court ruling in Bilski v. Kappos (95 U.S.P.Q.2d 1001; 2010 U.S. LEXIS 5521) the United States Patent and Trademark Office (USPTO) has issued a Memo to Examiners indicating that the “machine-or-transformation test” should continue to be used to evaluate whether a patent claim is directed to patent eligible subject matter under 35 U.S.C. Section 101. The USPTO is relying on the fact that the majority Opinion in the Bilski case, while stating the machine-or- transformation test is not the sole test, called the machine-or-transformation test a “useful and important clue” in ascertaining whether a claim is patent eligible. The Memo sets up a rebuttable presumption of patent eligibility based on the test as set forth below: Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 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. Accordingly, for the time being, not much has changed with respect to 35 U.S.C. Section 101 for applicants prosecuting patent applications. Of course, it remains to be seen how the Decision in Bilski will be addressed by the courts. Also, the USPTO has indicated that it will provide continued guidance to examiners with respect to this matter. For more information about this or any other matter related to patent prosecution practice, please contact your Nixon Peabody attorney or Marc Kaufman or David Resnick, co-chairs, Patents practice. • Marc S. Kaufman, 202-585-8164, [email protected] • David S. Resnick, 617-345-6057, [email protected].