What's patentable?
As you may know, the United States Supreme Court will help clarify what is patent eligible subject matter in the case Bilski v. Kappos. The holding in Bilski will tell us how determine whether business method/software/medical process inventions are patentable and whether many issued patents with such claims are still valid. But before the Supreme Court issues its opinion (Oral argument is not scheduled until November 9, 2009), the examiners of the United States Patent and Trademark Office (USPTO) must continue to make decisions on patentability every day. The examiners just can't wait for the Supreme Court to ponder, mull and then opine on the issue. So the USPTO has provided their examiners Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility to help them determine which claims are directed to patent eligible subject matter under 35 U.S.C. § 101. The examiners should follow these instructions until further notice. These instruction are important so that we may know exactly what the examiner is looking for in your patent claims to determine patentability and to prepare arguments against the increasing number of rejections of business method/software and other method claims in patent applications.
