Patentable Subject Matter

USPTO Provides Interim Guidance for Determining Patent Eligible Subject Matter in View of Bilski Decision

September 2, 2010

The United States Patent and Trademark Office (USPTO) has provided interim guidelines for determining subject matter eligibility under 35 U.S.C. §101 for process claims in view of the United States Supreme Court’s 2010 decision in Bilski v. Kappos.  The guidelines provide additional factors to aid in the determination of whether a method which fails the machine or transformation test is patentable or vice versa.  The guidelines state that §101 outcomes are not likely to change in most cases, and reminded that §101 should not be relied upon to avoid a full examination under other sections.  The guidelines outline specific factors weighing toward and against eligibility under §101.  Click here for more information on the interim guidelines. 


Bilski v. Kappos (Supreme Court 2010)(08-964)

June 28, 2010

At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices Breyer and Stevens, the Court, instead of relying on the Federal Circuit’s “machine-or-transformation” test, relied on prior precedent to conclude that the claimed method was an “abstract idea” and thus not patentable. Interestingly, the opinion does not interpret §101 to exclude business method patents, and although the Court expressly refused to rule on the patentability of software, early consensus is that software will remain largely patentable.

Click here to read the full opinion, and please stay tuned for our further in-depth analysis of the Bilski v. Kappos decision.


Patent Office Extends Comment Period for Interim Examination Guidelines for Patentable Subject Matter

September 30, 2009

Following up on a previous posting regarding the Patent Office’s request for comments on its Interim Guidelines for Patentable Subject Matter, the Patent Office has now extended the previous 11 day period in which to submit comments to 30 days from the publication date of the Notice.  The new deadline to submit comments is now October 17, 2009.

These interim guidelines are intended to aid Examiners in analyzing whether the claims in a patent application are directed to patentable subject matter.  Again, it should be emphasized that these are merely interim guidelines, and it is likely that these guidelines will change depending on the Supreme Court’s ruling in the Bilski case.