In view of the recent Supreme Court decision in Bilski v. Kappos, the U.S. Patent and Trademark Office has issued interim guidance for its personnel to use in determining subject matter eligibility for process claims under 35 U.S.C. 101.
Among other things, the interim guidelines provide a “quick reference sheet” which outlines several factors weighing toward eligibility under Section 101 and several factors which weigh against patent eligibility. While these guidelines do not have the force and effect of law, they may be worth considering in the drafting of some method claims.
According to the July 27 Federal Register Notice, the USPTO is also accepting comments on its Interim Bilski Guidance through September 27, 2010. For instance, the public is invited to provide examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible. The USPTO is also requesting input as to the possible categorization of certain types of patent applications that claim to instruct how business should be conducted, and explanations as to how such categories could represent an unpatentable attempt to patent abstract ideas.