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NEW GUIDANCE FROM THE USPTO FOR SUBJECT MATTER ELIGIBILITY OF PROCESS CLAIMS

On July 27, 2010, the United States Patent and Trademark Office (USPTO) issued Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos, No. 08-964 (June 28, 2010) (Interim Guidance). The Interim Guidance is to be used by Patent Examiners at the USPTO to determine whether process claims in patent applications satisfy the requirements of 35 U.S.C. § 101.

Prior to the Interim Guidance, the USPTO used the Machine or Transformation Test to determine whether a process claim satisfies 35 U.S.C. § 101 (discussed in Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 dated August 24, 2009 (Interim Instructions)). Because the U.S. Supreme Court in Bilski v. Kappos acknowledged that the Machine or Transformation Test remains a useful tool in determining subject matter eligibility, the USPTO stated that the Interim Guidance is intended as a supplement to the previously issued Interim Instructions. However, the Interim Guidance provides the additional factors to determine whether a process claim is patent eligible under 35 U.S.C. § 101. Specifically, the additional factors provide guidance as to whether process claims are still patent eligible even when the process claims do not satisfy the Machine or Transformation Test.

While the Interim Guidance is not law, the Interim Guidance is drafted in view of the law as interpreted by the USPTO. In general, Examiners rely on the Interim Guidance to determine whether the subject matter is patent eligible. Thus, Applicants may reference the factors in Interim Guidance as persuasive authority when addressing issues arising from 35 U.S.C. § 101. However, neither the Examiner nor the Applicant is bound by the Interim Guidance. Therefore, in addition to the Interim Guidance, Applicants should continue to cite relevant statutes and case law in addressing rejections under 35 U.S.C. § 101.

To view the Interim Guidance with the additional factors, please click here.
To view the Interim Instructions, please click here.
For further discussion of Bilski v. Kappos, please see "Back to Business Methods as Usual: Bilski v. Kappos."
 

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