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New Bilski Guidance and Request for Comments

By just_n_examiner

The office published their Interim Bilski Guidance for Examiners in the Federal Register today.

Surprisingly to me, they did so in the form of a Request for Comments.

I actually think that this is a great idea. We're hearing pretty much the same thing from both sides of the patent world in the wake of the Bilski decision (e.g., How is one to figure out what constitutes an abstract idea, given the complete lack of guidance provided from the Supreme Court?). Since everybody seems to be in the same boat here, it makes a whole lot of sense to put everybody's heads together and try to figure out how to define an abstract idea to the satisfaction of the Supreme Court. (I know; it'll never happen.)

The Office is looking for help in the form of examples of claims which fail the MoT test but are not abstract ideas, claims that meet the MoT test yet are abstract ideas, and candidate categories of business method applications that as a class would constitute abstract ideas.

Public comments will be accepted until 27 September.

In their Interim Guidance, the Office provided a laundry list of factors to be considered in addition to the MoT test when considering whether claims are drawn to abstract ideas. I have to admit that these factors seem to be pretty well thought out, although applying them means devoting even more time to 101 analysis and therefore less time to other facets of examination (like search), particularly since examiners must now write 101 rejections that "point out the factors that are relied upon in making the determination." Since applicants will need this information in order to rebut any abstract idea-type 101 rejections, though, including it in the rejection is obviously necessary.

Full post as published by Just a Patent Examiner on July 27, 2010 (boomark / email).