USPTO issues new section 101 guidelines for use until Supreme Court decides Bilski v. Doll

August 28, 2009
Post by Blog Staff

This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski.

The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis. Click below to review the materials in more detail.

The flow charts are reproduced below:

101 flowchart 1

101 flow chart 2

The flow charts at least effectively illustrate the necessary steps in the analysis after Bilski, but do not provide much in the way of guidance in how to perform each step of the analysis. The details of the actual analysis to be performed during examination are in an instructional memo to examiners.

Of course, all this is likely to become moot after the Supreme Court weighs in on the issue in Bilski v. Kappos (renamed now that David Kappos has officially been sworn in as USPTO director) in the upcoming term. Oral argument in the case is set for November 9, with a decision likely to follow in the spring of 2010.

Kudos to Patently-O for first releasing these materials.

Also, IP Kat has disclosed a humorous additional test to be applied in light of these rules, the "Baby in Bathwater" test.

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