The Supreme Court of the United States issued an opinion on appeal (as Bilski v. Kappos) that affirmed the judgment of the CAFC of affirming the rejection of the patent, but revised many aspects of the CAFC’s decision. In their decision, handed down on June 28, 2010, the Supreme Court rejected the machine-or-transformation test as the sole test of process patent eligibility based on an interpretation of the language of 35 USC § 101.

Reading the opinion and listing to US law insiders, it appears that there is the opinion that the Supreme Court of the United States does not favour one test or rule to be the only one decisive test to 35 USC $ 101 since this one test may not be suitable for future technical developments.
In G01/04 and G03/08, the EPO’s Enlarged Board of Appeals seems to have the same approach. The ‘feature stripping approach’ of the EPO, namely to ignore non-technical features in the assessment of inventive step, basically is a case by case approach where no general rule is blindly applied. It leaves a lot of freedom to the examiners to apply ‘common sense’. I hope the EPO will make use of it !!


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2 comments

  1. The reference to the EPO Enlarged Board of Appeal decision G 3/08 is incorrect. In this decision, the EBoA essentially decided it is not admissible, because the procedural requirements for the EPO president to invoke the EBoA are not met.

    Still the EBoA spends some words on the tests that have been developed for the assessment of software patent applications by the technical boards of appeal. It says the inconsistencies are minor, and to be attributed to normal development of law. Leaving aside whether that is really true, the EBoA does *not* say that the – pretty detailed – tests for the assessment of software patent applications no longer apply, Rather the opposite!

    So there is no similarity between de “Bilski v. Kappos” decision, but rather the opposite. While the US Supreme Court rejects a specific test, the EPO maintains a very specific test.

    In my opinion, a straightforward test is indispensable. Patent applications must be assessed in large numbers by patent offices. They need as simple rules as possible. This process should not normally need court interference.

  2. Yes and no. I was of your opinion until a couple of weeks ago. As a practitoner, I would prefer a simple and straight forward test. However, I cant think of a test, my colleagues cant think of a test and apparently, the EBoA cant think of an easy test which is fit for the future, too. Thus, we will see the relative flexible ‘feature stripping test’ for another couple of years. And I think, it leaves a lot of leeway for good prosecution!

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