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Paul C. Craane Leads Discussion on USPTO's Bilski Guidance
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September 15, 2010
Although the Supreme Court’s decision in Bilski v. Kappos is less than three months old, the United States Patent and Trademark Office (USPTO) has now provided two rounds of informal guidance to its Examiners on the threshold issue of patent-eligibility addressed in Bilski.
Partner Paul C. Craane offered his comments on the first set of guidance to InsideCounsel magazine, in the article “Supreme Court Finally Rules in Bilski v. Kappos.” As Mr. Craane noted, the initial guidance placed too much weight on the machine-or-transformation test, and thus “effectively ignored” the holding in Bilski. At that time, Mr. Craane stated that he was looking for change in the USPTO’s guidance.
Less than a month later, the USPTO returned with a second, more detailed set of guidelines, referred to as the Interim Bilski Guidance. Mr. Craane confided to Managing Intellectual Property magazine, in “How Bilski is Being Applied in Practice,” that the Interim Bilski Guidance is “an improvement” overall, “closer to the spirit and the letter of Bilski.” Still, Mr. Craane noted that the guidance had the potential for creating mischief, especially as to innovations in those trades or industries that were particularly called out in the Interim Bilski Guidance, such as the financial services industry.
Like many patent professionals, Mr. Craane is waiting for still further comments from the USPTO on Bilski, which the USPTO hopes to have prepared “within a few months” of the September 27, 2010 deadline for submitting comments on the Interim Bilski Guidance.
Paul C. Craane provides balanced counsel that aligns legal strategies with clients’ business goals, drawing on his background in litigation and prosecution. With nearly two decades of experience in all facets of domestic and foreign intellectual property law, he provides an educated perspective to every project. Valued for his ability to keep the client “in the loop,” Mr. Craane is committed to communication and education. He seeks a deeper understanding of his clients’ businesses, while providing them with timely information on the ever-changing legal landscape.
