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Guidelines for patent subject matter(07/30/10)
On July 27, 2010, the United States Patent and Trademark Office published in the Federal Register interim guidelines for determining patent subject matter eligibility for process claims in view of the Supreme Court case of Bilski v. Kappos (June 28, 2010). These guidelines are to be used by patent examiners for applications filed before and after July 27, 2010. The interested public is invited to submit comments on the interim guidelines on or before September 27, 2010.
The interim guidelines remind examiners of the principles of “compact prosecution,” in which the examiner must review the application for compliance with all statutory requirements of patentability, including novelty and non-obviousness, rather than reject the application’s claims solely on the basis of lack of patent eligible subject matter in the first office action.
The interim guidelines provide guidance on the “abstract idea” exception to subject matter patent eligibility for processes as set forth in Bilski, equip examiners with a list of factors “weighing toward” and “weighing against” subject matter patent-eligibility, and describe the process by which patent examiners must determine patent subject matter eligibility. Applicants having currently pending applications as well as new applications in preparation that have process claims, particularly for business methods and any process that is not tied to a particular machine or effects a “transformation,” will need to carefully study the interim guidelines.
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