Patent Office Releases Interim Bilski Guidelines


Written by Gene Quinn (of and Patent Center Contributor)

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

These interim guidelines build upon the memo sent to the examining corps the day the Supreme Court issued its decision in Bilski v. Kappos, and is intended for use by Office personnel when determining subject matter eligibility under 35 U.S.C. 101. According to the Federal Register Notice, this guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.

Significantly, the guidelines explain:

Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 to the detriment of considering an application for compliance with the requirements of Sec. Sec. 102, 103, and 112, and should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.

This should be music to the ears of the patent bar and applicants who were previously stopped dead in their tracks by a seemingly insurmountable 101 rejection.

Additionally, the Federal Register Notice encourages patent examiners to not merely make naked patentable subject matter rejections, but rather to proceed with examination and provide all bases for rejecting claims in the First Office Action. To this end the Notice says:

Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to the patent eligibility requirement of 35 U.S.C. 101. Thus, Office personnel should state all non-cumulative reasons and bases for rejecting claims in the first Office action.

The Patent Office explains that it is their understanding of the Supreme Court decision in Bilski that the Court intended to “underscored that the text of Sec. 101 is expansive… [and] business methods are not “categorically outside of Sec. 101’s scope…”

The Notice also reminds examiners are reminded that Sec. 101 is not the sole tool for determining patentability where a claim encompasses an abstract idea, and specifically states that “Section 101 is merely a coarse filter and thus a determination of eligibility under Sec. 101 is only a threshold question for patentability.” This should hardly be considered new, or refreshing, but the way that the Patent Office and many patent examiners have interpreted business methods and computer implemented methods over the last few years suggests that this change in examiner guidance could be monumental. It really ought to not be monumental because this guidance merely directs the patent examiners accurately on the law, and patent eligibility under Section 101 has always been merely a threshold question. Patent examiners and the Patent Office for years have not treated it that way, largely ignoring basic principles of patent law. This guidance should put an end to that and there is real reason for optimism.

The Federal Register Notice also includes something of a worksheet or checklist for patent examiners. It provides a list of factors that should be considered when analyzing a claim for the purpose of evaluating whether the method in the claim is directed to an abstract idea, but specifically points out that not every factor will be relevant in every situation. Furthermore, no factor is to be considered conclusive by itself, and the weight accorded each factor will vary based upon the facts of the application. Of course, the Notice also explains that the factors are not intended to be exclusive or exhaustive.

To read the entire article click here.

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2 Responses to “Patent Office Releases Interim Bilski Guidelines”

  1. […] it’s Interim Guidance for Determining Subject Matter Eligibility for Process Claims (See Patent Office Releases Interim Bilski Guidelines ).  I had an opportunity to discuss the Interim Bilski Guidelines with David Luettgen, partner at […]

  2. […] the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course.  So I thought I would take this opportunity to write, once again, about how to […]

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