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

Bill NaifehPatents

The United States Patent and Trademark Office (USPTO) has recently announced that it has prepared further interim guidance for the patent examining corps 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 in Bilski v. Kappos. This interim guidance is a supplement to previously issued interim instructions dated August 24, 2009, and it supersedes the interim guidance memo to the examining corps dated June 28, 2010.   The USPTO is seeking public comment on this interim guidance and intends to issue final guidance after evaluating the public comments.

According to the USPTO, the interim guidance sets forth the factors that should be considered in determining subject matter eligibility of method claims in view of the abstract idea exception.   According to the guidance, the machine-or-transformation test remains an investigative tool and is a useful starting point for determining whether a claimed invention is a process under 35 U.S.C. § 101 but, as the Supreme Court made clear, is not the sole test for determining subject matter eligibility.  The interim guidance provides additional factors to aid in the determination of whether a claimed method is an abstract idea.

“With this set of interim guidance, we are providing the patent examining corps and the IP community with additional guidance regarding factors that may be considered in determining subject matter eligibility in light of the Supreme Court’s decision in Bilski,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.  “We now seek input from the public as we further refine and finalize this guidance.  In the meantime, this interim guidance will assist our examiners in their examination of applications where subject matter eligibility of method claims must be determined.”

For more information, see the July 27, 2010 Federal Register at:

The interim guidance was signed on July 21, 2010.   An internal memo issued to the patent examining corps on the subject can be found on the USPTO Web site: