USPTO 2010 consultation

(This consultation is closed. ESP's submission is online.)

The USPTO is accepting comments until 27 September 2010 on their proposed examiner guidelines for interpreting the Supreme Court's recent Bilski decision. ESP is asking for your help in analysing these texts and brainstorming on what points to highlight when ESP sends the USPTO its comment.

The main documents

• USPTO interim guidelines request for comment (news.swpat.org text version)
  • The original can be found at 2010-18424.pdf
• USPTO Method Eligibility Quick Reference Sheet (news.swpat.org text version)
  • The original can be found at Pages 3 and 4 of bilski_guidance_27jul2010.pdf
• There's also a USPTO memo which contains an informative cover page plus the two above documents
• The USPTO's press release

How to make a submission

You can make a submission by post or email, but the USPTO says they prefer email. The address is: Bilski_Guidance@uspto.gov

Submissions can be made up to and including Monday the 27^th, 2010.

What we should argue for

The USPTO says that, compared to the USPTO's previous guidelines, the Supreme Court's decision only affects a few rare cases, sometimes broadening patentability, sometimes narrowing it. We argue that:

• It affects many cases, not just a rare few
• The effects are pretty much always to narrow patentability
• The court's decision shows that the USPTO's previous guidelines were already granting too many software patents
  • The district court rulings that threw patents out based on the CAFC's Bilski ruling might give insight on this

Analysis of the interim guideline RFC

Add your observations here regarding this text: http://news.swpat.org/2010/08/uspto-request-comment/

Analysis of the Quick Reference Sheet

Add your observations here regarding this text: http://news.swpat.org/2010/08/uspto-ref-sheet/

Arguments worth using

Ideas can be found at Why abolish software patents? The USPTO will want to focus on legal aspects and interpretations. To make "common good" arguments, we'd have to show clearly how the USPTO is obliged to listen to that type of argument.

Related pages on ESP Wiki

• USPTO
• Patentability in the USA after Bilski
• Bilski: analysis of Supreme Court decision
• Consultations from patent offices, governments, and courts

External links

(Note: the main official documents are linked in the first paragraph of this article.)

• USPTO Asks for Comments on New Interim Guidance on Bilski, on Groklaw, 29 July 2010
• USPTO Interim Bilski Guidelines: David Luettgen of Foley & Lardner Weighs In, 6 Aug 2010
• The USPTO’s Interim Guidance For Determining Subject Matter Eligibility For Process Claims, 28 July 2010, PatentablyDefined
• Bilski Rundown (transcript), 29 June 2010, Dan Ravicher
• KSR, patent obviousness and USPTO practice, 29 Sep 2010, ipeg

Submissions

• ESP responds to USPTO consultation, 27 Sep 2010, End Software Patents
• Physical Aspects of Mathematics (An Open Response to the USPTO), 27 Sep 2010, PolR, explaining how software is math
• Red Hat Responds to U.S. Patent and Trademark Office Request for Guidance on Bilski, Red Hat
• Over 450 letters sent to the USPTO proposing guidelines to end software patents, FSF