Patentable Subject Matter: BPAI Decisions

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On October 30, 2008, the U.S. Court of Appeals for the Federal Circuit in In re Bilski set forth the "sole test" for determining whether a process claim is directed to patent-eligible subject matter.

Attorney Robert Bailey has published a white paper, "Patentable Subject Matter: BPAI Decisions," examining the decisions of the Board of Patent Appeals and Interferences (BPAI) of the USPTO that discuss In re Bilski. The paper begins with a brief summary of the machine-or-transformation test set forth in In re Bilski. Then, a brief overview of the BPAI before turning to a discussion of specific observations of various BPAI decisions. In particular, Bailey has divided the discussion of the BPAI decisions into the following areas:

1. Absences of Particular Machines
2. Preambles
3. Generic Terms
4. Implicit Structure
5. Broadest Reasonable Interpretation
6. Beauregard Claims
7. Transformation