Filed under: Patents | 5 April, 2010 | by admin

The Federal Circuit rejection of StateStreet’s 10-year old test for evaluating subject matter eligibility in Bilski effectively voided the USPTO’s established procedures for evaluating subject matter eligibility and placed the validity of claims directed to business methods, biotechnology, and software in question.  In the hopes of clarifying the scope of patent-eligible subject matter until the Supreme Court’s upcoming review of Bilski, the USPTO recently released its “Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. §101” (“interim guidelines”). It appears that the PTO has also placed its own mark on the patentable subject matter test, rejecting aspects of a controversial Federal District Court decision that threatened to invalidate hundreds of previously patented computer readable storage medium claims. Above all, the guidelines should promote greater uniformity in the Office’s examination of software and business method claims until the Supreme Court decides the pending appeal of Bilski.  (You can read more of this article in our Winter 2010 Newsletter).