United States Patent and Trademark Office OG Notices: 10 January 2006
DEPARTMENT OF COMMERCE
Patent and Trademark Office
RIN 0651-AB98
Request for Comments on Interim Guidelines for
Examination of Patent Applications for
Patent Subject Matter Eligibility
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
SUMMARY: The United States Patent and Trademark Office (USPTO) has, in
response to recent case law, revised its guidelines to be used by USPTO
personnel in their review of patent applications to determine whether the
claims in a patent application are directed to patent eligible subject
matter. The USPTO is requesting comments from the public regarding these
interim examination guidelines.
Comment Deadline Date: To be ensured of consideration, written comments
must be received on or before June 30, 2006. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB98.Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile to
(571) 273-0125, marked to the attention of Linda Therkorn. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet. If comments are submitted by mail, the
Office prefers that the comments be submitted on a DOS formatted 3 1/2 inch
disk accompanied by a paper copy.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office of
the Commissioner for Patents, located in Madison East, Tenth Floor, 600
Dulany Street, Alexandria, Virginia, and will be available via the Office
Internet Web site (address: http://frwebgate.access.gpo.gov/cgi-bin/
leaving.cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.gov).
Because comments will be made available for public inspection, information
that is not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Linda Therkorn, Office of the Deputy
Commissioner for Patent Examination Policy, by telephone at 571-272-8800,
or Ray Chen, Office of the Solicitor, by telephone at 571-272-9035, by mail
addressed to: Mail Stop Comments, P.O. Box 1450, Alexandria, VA,
22313-1450, or by facsimile transmission to 571-273-0125, marked to the
attention of Linda Therkorn or Ray Chen.
SUPPLEMENTARY INFORMATION: The USPTO has published a notice setting forth
interim guidelines for the examination of patent applications for patent
subject matter eligibility under 35 U.S.C. 101. See Interim Guidelines for
Examination of Patent Applications for Patent Subject Matter Eligibility,
1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005) (Patent Subject Matter
Eligibility Interim Guidelines).
The Patent Subject Matter Eligibility Interim Guidelines are based on
the USPTO's current understanding of the law and are believed to be fully
consistent with binding precedent of the U.S. Supreme Court, the U.S. Court
of Appeals for the Federal Circuit (Federal Circuit) and the Federal
Circuit's predecessor courts. The Patent Subject Matter Eligibility Interim
Guidelines do not constitute substantive rule making and hence do not have
the force and effect of law. The Patent Subject Matter Eligibility Interim
Guidelines have been designed to assist USPTO personnel in analyzing
claimed subject matter for compliance with substantive law. Rejections will
be based upon the substantive law and it is these rejections which are
appealable. Consequently, any failure by USPTO personnel to follow the
Patent Subject Matter Eligibility Interim Guidelines is neither appealable
nor petitionable.
The Patent Subject Matter Eligibility Interim Guidelines merely revise
USPTO examination practice for consistency with the USPTO's current
understanding of the case law regarding patent subject matter eligibility
under 35 U.S.C. 101. Therefore, the Patent Subject Matter Eligibility
Interim Guidelines are interpretive or relate only to agency practice and
procedure, and prior notice and an opportunity for public comment are not
required under 5 U.S.C. 553(b)(A) (or any other law). Nevertheless, the
USPTO is providing this opportunity for public comment because the USPTO
desires the benefit of public comment on the Patent Subject Matter
Eligibility Interim Guidelines.
The USPTO is particularly interested in comments addressing the
following questions:
(1) While the Patent Subject Matter Eligibility Interim Guidelines
explain that physical transformation of an article or physical object to a
different state or thing to another establishes that a claimed invention is
eligible for patent protection, Annex III to the Patent Subject Matter
Eligibility Interim Guidelines explains that identifying that a claim
transforms data from one value to another is not by itself sufficient for
establishing that the claim is eligible for patent protection. Therefore,
claims that perform data transformation must still be examined for whether
there is a practical application of an abstract idea that produces a
useful, concrete, and tangible result. Is the distinction between physical
transformation and data transformation appropriate in the context of the
Patent Subject Matter Eligibility Interim Guidelines? If not, please
explain why and provide support for an alternative analysis.
(2) Is the USPTO interpretation of State Street Bank & Trust Co. v.
Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir.
1998), as holding that if there is no physical transformation, a claimed
invention must necessarily, either expressly or inherently, produce a
useful, concrete, and tangible result (rather than just be "capable of"
producing such a result) either too broad or too narrow? If so, please
suggest an alternative interpretation and reasons therefor.
(3) As the courts have yet to define the terms "useful," "concrete," and
"tangible" in the context of the practical application requirement, are the
explanations provided in the Patent Subject Matter Eligibility Interim
Guidelines sufficient? If not, please suggest alternative explanations.
(4) What role should preemption have in the determination of whether a
claimed invention is directed to a practical application of a 35 U.S.C. 101
judicial exception?
(5) Annex IV to the Patent Subject Matter Eligibility Interim Guidelines
explains why the USPTO considers claims to signals per se, whether
functional descriptive material or non-functional descriptive material, to
be nonstatutory subject matter. Does the USPTO analysis represent a
reasonable extrapolation of relevant case law? If not, please explain why
and provide support for an alternative analysis. If claims directed to a
signal per se are determined to be statutory subject matter, what is the
potential impact on internet service providers, satellites, wireless
fidelity (WiFi [reg]), and other carriers of signals?
The USPTO also notes that the U.S. Supreme Court has granted certiorari
in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.,
S.Ct. No. 04-607 (LabCorp). See 546 U.S. - (Nov. 2, 2005). The USPTO
expects that a decision in LabCorp will be rendered sometime before the end
of June 2006. Since the Court's decision in LabCorp may impact the broader
question of patent subject matter eligibility under 35 U.S.C. 101, the
USPTO is extending the period for public comment on the USPTO's Patent
Subject Matter Eligibility Interim Guidelines until June 30, 2006. The
USPTO will publish a notice further extending the period for public comment
on the USPTO's Patent Subject Matter Eligibility Interim Guidelines if
necessary to permit the comments to take into account the Court's decision
in LabCorp.
December 14, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office