Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos

The USPTO has prepared Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos (Interim Bilski Guidance) for its personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of the recent decision by the United States Supreme Court (Supreme Court) in Bilski v. Kappos, No. 08-964 (June 28, 2010). It is intended to be used by Office personnel as a supplement to the previously issued Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 dated August 24, 2009 (August 2009 Interim Instructions) and the memorandum to the Patent Examining Corps on the Supreme Court Decision in Bilski v. Kappos dated June 28, 2010. The August 2009 Interim Instructions are to be consulted for determining subject matter eligibility under 35 U.S.C. § 101 of machine, composition, and manufacture claims.

July 27, 2010 Memorandum to the Examining Corps

Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos [PDF]

101 Method Eligibility Quick Reference Sheet

The Interim Bilski Guidance provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. § 101. Under the Interim Bilski Guidance, factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied, and factors that weigh against patent-eligibility neither satisfy the criteria of the machine-or-transformation test nor provide evidence that the abstract idea has been practically applied.

A summary sheet of these factors is available here.

How to Comment

Any member of the public may submit written comments on the Interim Bilski Guidance. The Office is especially interested in receiving comments regarding the scope and extent of the holding in Bilski.

Comments concerning this Interim Bilski Guidance should be sent by electronic mail message over the Internet addressed to Bilski_Guidance@uspto.gov or facsimile transmitted to (571) 273-0125. Comments may also be submitted by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Although comments may be submitted by facsimile or mail, the Office prefers to receive comments via the Internet.

The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

June 28, 2010 Memorandum to the Examining Corps

Supreme Court Decision in Bilski v. Kappos (signed June 28, 2010) [PDF]

August 2009 Interim Instructions

Interim Examination Instructions For Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (signed 24 August 2009) [PDF]

Interim Patent Subject Matter Eligibility Training Materials (2009) [PDF]

Bilski Court Documents

Court documents related to the Bilski Federal Circuit panel proceedings, the Bilski Federal Circuit en banc proceedings, and the Bilski Supreme Court proceedings are available here.