| Examination Instructions and Guidelines |
Referenced Items (205, 206, 207, 208, 209, 210, 211, 212, 213, 214, 215, 216, 217, 218, 219, 220, 221) |
(205) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2015-0034]
July 2015 Update on Subject Matter Eligibility
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Update; Request for comments.
SUMMARY: The United States Patent and Trademark Office (USPTO) prepared
interim guidance (2014 Interim Patent Eligibility Guidance) for use by
USPTO personnel in determining subject matter eligibility in view of
then-recent decisions by the U.S. Supreme Court (Supreme Court). The USPTO
published the 2014 Interim Patent Eligibility Guidance in the Federal
Register, and sought public comment on the 2014 Interim Patent Eligibility
Guidance. The USPTO has since produced an update pertaining to patent
subject matter eligibility titled July 2015 Update: Subject Matter
Eligibility, which is available to the public on the USPTO's Internet Web
site, in response to the public comment on the 2014 Interim Patent
Eligibility Guidance. The July 2015 Update: Subject Matter Eligibility
includes a new set of examples and discussion of various issues raised by
the public comments, and is intended to assist examiners in applying the
2014 Interim Patent Eligibility Guidance during the patent examination
process. The USPTO is now seeking public comment on the July 2015 Update:
Subject Matter Eligibility.
COMMENT DEADLINE DATE: To be ensured of consideration, written comments on
July 2015 Update: Subject Matter Eligibility must be received on or before
October 28, 2015.
ADDRESSES: Comments on the July 2015 Update: Subject Matter Eligibility
must be sent by electronic mail message over the Internet addressed to:
2014_interim_guidance@uspto.gov. Electronic comments submitted in plain
text are preferred, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. The comments will be
available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make public,
such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Senior Legal Advisor, Office
of Patent Legal Administration, by telephone at 571-272-7728, or Michael
Cygan, Senior Legal Advisor, Office of Patent Legal Administration, by
telephone at 571-272-7700.
SUPPLEMENTARY INFORMATION: The 2014 Interim Patent Eligibility Guidance,
prepared for use by USPTO personnel in determining subject matter
eligibility under 35 U.S.C. 101, was published in the Federal Register on
December 16, 2014. See 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 FR 74618 (Dec. 16, 2014). The USPTO also sought public
comment on the 2014 Interim Patent Eligibility Guidance, along with
additional suggestions on claim examples for explanatory example sets.
The USPTO received over sixty comments from the public. The public
comments include the following six major themes: (1) requests for
additional examples, particularly for claims directed to abstract ideas and
laws of nature; (2) further explanation of the markedly different
characteristics analysis; (3) further information regarding how examiners
identify abstract ideas; (4) discussion of the prima facie case and the
role of evidence with respect to eligibility rejections; (5) information
regarding application of the 2014 Interim Patent Eligibility Guidance in
the Patent Examining Corps; and (6) explanation of the role of preemption
in the eligibility analysis, including a discussion of the streamlined
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US PATENT AND TRADEMARK OFFICE |
1421 CNOG 788 |
analysis.
The USPTO has produced a July 2015 Update: Subject Matter Eligibility
responding to each of the six major themes from the public comments. The
July 2015 Update: Subject Matter Eligibility includes three appendices. The
first appendix (Appendix 1) provides new examples that are illustrative of
major themes from the comments. The second appendix (Appendix 2) is a
comprehensive index of examples for use with the 2014 Interim Patent
Eligibility Guidance, including new and previously issued examples. The
third appendix (Appendix 3) lists and discusses selected eligibility cases
from the Supreme Court and the U.S. Court of Appeals for the Federal
Circuit. The July 2015 Update: Subject Matter Eligibility is intended to
assist examiners in applying the 2014 Interim Patent Eligibility Guidance
during the patent examination process.
The July 2015 Update: Subject Matter Eligibility, including the
appendices, are available to the public on the USPTO's Internet Web site.
The USPTO is now seeking public comment on the July 2015 Update: Subject
Matter Eligibility.
July 15, 2015 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1417 OG 252]