The USPTO’s Interim Guidance For Determining Subject Matter Eligibility For Process Claims

July 28, 2010

in News

The USPTO has published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. This Interim Guidance went into effect yesterday, July 27, 2010, supersedes previous guidance on subject matter eligibility, and is to be retroactively applied to all pending applications. The Interim Guidance is available here (in html) and here (in pdf).

The Interim Guidance includes some illustrative claims and lists of factors relevant to determinations of subject matter eligibility.  I am confident that many of the better patent law related blogs will thoroughly discuss the Interim Guidance in the coming days, and I leave it to my readers to explore those discussions (several of the better patent law related blogs are listed in my blogroll at the bottom of this page).  The remainder of this post concerns a few aspects of the Interim Guidance that caught my attention and might be of immediate and practical use in a response to a subject matter rejection under 35 U.S.C. § 101.

Firstly, I could not help but notice the following instruction to all Examiners:

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.

Secondly, the Interim Guidance warns Examiners to:

… 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.

For those who are regular readers of this blog, you know how I view the USPTO’s policy of compact prosecution as a valuable offensive tool. So, it is reassuring to see the Office reemphasize its importance. My earlier blog post on the policy of compact prosecution with examples of how to use it follows this link.

A Friendly Reminder
Keep in mind that the Interim Guidance is merely guidance.  It DOES NOT constitute substantive rule making and hence does not have the force and effect of law. This means that any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

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