The machine or transformation test helps determine whether a process is patentable if it’s tied to a particular machine or apparatus or if it transforms a particular article into a different state or thing. But, in its landmark Bilski decision last year, the U.S. Supreme Court held that it isn’t the sole test for determining whether a business method or similar process is patentable. In light of that ruling, the U.S. Patent and Trademark Office (USPTO) issued its Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The guidance provides valuable insight on the types of claims that might qualify for patents.

3 Factors Favoring Patentability

The USPTO’s guidance identifies three major factors that favor patentability because they either satisfy the machine or transformation test or provide evidence that the process has been practically applied:

1. The claim describes a machine or transformation (either expressly or inherently) and the machine or transformation can be specifically identified. The machine or transformation must also meaningfully limit the execution of the method’s steps — as opposed to only insignificantly contributing to the execution — and the machine must implement those steps. In addition, the original article needs to be specifically identifiable, while the transformed article must undergo a change in state or thing. For example, the article would have an objectively different function or use. Last, the transformed article needs to be an object or substance, as opposed to a concept such as a contractual obligation or mental judgment.

2. The claim is directed toward applying a law of nature. The law of nature must be practically applied and that application of the law of nature needs to limit the execution of the steps meaningfully.

3. The claim is more than a mere statement of a concept. Rather, the claim must describe a particular solution to a problem to be solved and implement a concept in some tangible way. Finally, the performance of the steps needs to be observable and verifiable.

Factors Opposing Patentability

The USPTO’s guidance also lists several factors that weigh against patentability because they indicate a process is merely an abstract idea. First, a claim may fail if there’s no recitation of a machine or transformation (either express or inherent). Even an insufficient description of a machine or transformation may limit or prevent patentability. One example is when the involvement of the machine or transformation with the steps is merely nominally, insignificantly or tangentially related to the performance of the steps (for example, data gathering). Other examples include when:

The claim merely describes a field in which the method is intended to be applied, The machine is generically described so that it covers any machine capable of performing the claimed step(s), The machine is merely an object on which the method operates, and The transformation involves only a change in position or location of the article.

Patentability is also limited when the “article” is merely a general concept — including basic economic practices or theories, basic legal theories, mathematical concepts, mental activity, interpersonal interactions, teaching concepts, human behavior or instructions on how business “should be” conducted. What’s more, a claim can’t be directed to an application of a law of nature, nor can it monopolize a natural force or patent a scientific fact by, for example, claiming every mode of producing an effect of that law of nature. If the law of nature is applied in a merely subjective determination, the claim may be denied. And if the law of nature is merely nominally, insignificantly or tangentially related to the performance of the steps, the claim may also not pass muster.

Additionally, it’s critical that a claim not be a mere statement of a general concept. A claim may also be deemed unpatentable under the “general concept” factor if: Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery (or even without any apparatus), The claim states only a problem to be solved, The general concept is disembodied, and The mechanism(s) by which the steps are implemented is subjective or imperceptible. Finally, if use of the concept, as expressed in the method, would effectively grant a monopoly over the concept, patentability will likely be denied.

Beyond Patentability

Although the guidance doesn’t specifically address software applications, many observers are watching carefully to see how the revised standards will affect these products. And, of course, patentability is only a threshold issue. An invention that’s deemed patentable also must satisfy the Patent Act’s other requirements — including novelty, nonobviousness, definiteness, adequate description, enablement and best mode.

About the patent law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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