IP: Business methods, diagnostics and abstract ideas

How have Bilski and Mayo impacted claim examination in the PTO?

The Supreme Court has taken an increased interest in patent cases in recent years. Two cases important to entities that file business method patents, software patents and medical diagnostics are Bilski v. Kappos and Mayo Collaborative Services v. Prometheus Laboratories, Inc. These cases addressed claimed processes that apply algorithms and natural phenomena, and what can be considered patent-eligible subject matter. In the wake of these Supreme Court decisions, recent Board of Patent Appeals and Interferences (BPAI) decisions discussed below provide patent applicants some insight as to how to structure patent claims in light of Bilski and Mayo.

Patentable subject matter

Claims rejected as patent ineligible

In Ex parte Gusler, the rejected claims were directed to a method for automated project accountability comprising “determining at least one decision maker.” The claims were not limited to a computer and not constrained by any particular algorithm or metric. The claims were determined to involve only “well-understood, routine, conventional activity previously engaged in by researchers in the field” (Mayo). Additionally, the claims recited use of an “electronic forum” for performing a step in the algorithm but the “electronic forum” did not turn the purportedly recited computer into a special-purpose machine as required by Bilski. The board in Gusler reiterated that “One cannot circumvent the principles articulated by the Court through the use of clever claim drafting tactics involving the nominal addition of generic servers, computers, or networks.”

Contributing Author

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Katherine Neville

Katherine Neville, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. Her practice focuses on biotechnology patent prosecution for a range of...

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