Patent Law Practice Center

USPTO Interim Bilski Guidelines: David Luettgen of Foley & Lardner Weighs In

While the Supreme Court’s Bilski v. Kappos decision answered some questions regarding patent eligibility under 35 U.S.C. 101, much remains unclear.  Last week, the USPTO attempted to clear up some of the uncertainty for the patent examiners when it published 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 Foley & Lardner LLP.

Here is what he had to say…..

Me:  Most agree that the Bilski decision left a lot of uncertainty.  Do you think the USPTO’s interim guidelines help clear up some of that uncertainty? Are the guidelines a step in the right direction?

DL:  The guidelines are helpful in that they present the PTO’s view of everything we know about subject matter eligibility from Bilski and other cases.  However, the PTO cannot create certainty where none really exists.  There are just a lot of things we do not know right now.  It will take some Federal Circuit cases before we get that certainty, for example, in the areas of computer-implemented inventions and medical diagnostic methods. (more…)