PTO Releases More Substantive Response to Bilski v. Kappos

The U.S. Patent Office has today released new Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos.

This Interim Bilski Guidance is said to be used “as a supplement” to the previously published Memorandum to Patent Examining Corp Regarding the Supreme Court Decision in Bilski v. Kappos issued on June 28, 2010 and its Interim Examination Instructions originally issued on August 24, 2009.

Public comments are requested by September 27, 2010, and more specifically, answers to the following questions are requested:

1. What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?

2. What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?

3. The decision in Bilski suggested that it might be possible to ‘‘defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted,’’ such that the category itself would be unpatentable as ‘‘an attempt to patent abstract ideas.’’ Bilski slip op. at 12. Do any such ‘‘categories’’ exist? If so, how
does the category itself represent an ‘‘attempt to patent abstract ideas?’’

As usual, links to these materials and “all things Bilski” are available at http://AwakenIP.com/Bilski.

2 comments to PTO Releases More Substantive Response to Bilski v. Kappos

  • It seems to me that applicants are currently providing examples of all three in their appeals to the BPAI.

  • Neal

    Software patents should be abolished altogether. Canada is one country, among a growing number of them, that does not allow for patenting of software per se. Because most, if not all major software companies are American, the US government actively lobbying for proliferation of software patents. http://www.pinskylaw.ca