Patentable Subject Matter: Bilski and the New PTO Interim Guidance

Strategies for Patent Process Claims in an Uncertain Environment

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, October 29, 2009

Recorded event now available

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Course Materials

This seminar will examine subject matter patentability since the Federal Circuit Court's ruling in Bilski, how the U.S. Patent and Trademark Office will handle patentability matters pending the Supreme Court's review of Bilski, and offer best practices for patent seekers.


The Federal Circuit’s 2008 In re Bilski ruling effectively erased 10 years of patentable subject matter jurisprudence. Since then, the state of the law concerning subject matter eligibility has been in flux, pending the Supreme Court’s decision in Bilski v. Kappos expected spring 2010.

In response to patent seekers' uncertainty, the U.S. Patent and Trademark Office (PTO) issued Interim Examination Instructions for Evaluating Subject Matter Eligibility in August.

As patent applicants and counsel await the Supreme Court's final ruling, they must understand the current PTO standards for determining whether the subject matter of an application is patentable.

Listen as our authoritative panel of IP attorneys examines subject matter patentability and the PTO’s interim instructions. The panel will also provide an update on the Bilski case and offer strategies for patent applicants and practitioners in the uncertain environment.



  1. Landscape/Overview
    1. Fallout since the Federal Circuit’s ruling in In re Bilski
    2. In re Bilski update
  2. PTO Interim Guidance
    1. Criteria for determining subject matter eligibility
    2. Eligible machines, manufactures, and compositions of matter
    3. Processes (methods)
    4. Interim examining procedure for subject matter eligibility determinations
  3. Best practices for applicants and practitioners


The panel will review these and other key questions:

  • What criteria are required for subject matter eligibility under the PTO interim instructions?
  • How has the Bilski case impacted patent eligibility? What is the impact on past patent eligibility decisions?
  • What strategies should patent applicants employ to improve the likelihood of a successful patent application?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Thomas J. Scott, Jr.
Thomas J. Scott, Jr.

Goodwin Procter

He chairs the firm's Intellectual Property Group and focuses on all aspects of intellectual property including patent...  |  Read More

Arner, Erika
Erika H. Arner

Finnegan Henderson Farabow Garrett & Dunner

Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish...  |  Read More

Mark T. Garrett
Mark T. Garrett

Fulbright & Jaworski

His practice focus is in the area of patent law—both litigation and transactional. He has extensive patent...  |  Read More

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