| Examination Instructions and Guidelines |
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(238) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2019-0034]
October 2019 Patent Eligibility Guidance Update
AGENCY: United States Patent and Trademark Office, Department of Commerce.
ACTION: Notice.
SUMMARY: In January 2019, the United States Patent and Trademark Office
(USPTO) prepared revised guidance (2019 Patent Eligibility Guidance) for
use by USPTO personnel in evaluating subject matter eligibility. The USPTO
published the 2019 Patent Eligibility Guidance in the Federal Register and
sought public comment on the guidance. In view of the comments received in
response to the 2019 Patent Eligibility Guidance, the USPTO has produced an
update of its 2019 Patent Eligibility Guidance (the October 2019 Patent
Eligibility Guidance Update), which is available to the public on the
USPTO's website. The October 2019 Patent Eligibility Guidance Update
includes a new set of examples as well as a discussion of various issues
raised by the public comments. The Update is intended to assist Office
personnel in applying the 2019 Patent Eligibility Guidance. The Office
continues to welcome public feedback on an ongoing basis on the October
2019 Patent Eligibility Guidance Update or on any patent eligibility issue.
ADDRESSES: Comments must be submitted through the Federal eRulemaking
Portal at https://www.regulations.gov. To submit comments via
www.regulations.gov, enter docket number PTO-P-2019-0034 on the home page
and click "search." The site will provide a search results page listing all
documents associated with this docket. Find a reference to this notice and
click on the "Comment Now!" icon, complete the required fields, and enter
or attach your comments. Attachments to electronic comments will be
accepted in ADOBE® portable document format or MICROSOFT WORD® format.
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: Carolyn Kosowski, at 571-272-7688, Matthew
Sked, at 571-272-7627, or June Cohan, at 571-272-7744, all Senior Legal
Advisors at the Office of Patent Legal Administration.
SUPPLEMENTARY INFORMATION: The USPTO prepared the 2019 Patent Eligibility
Guidance for use by USPTO personnel in determining subject matter
eligibility under 35 U.S.C. 101. The USPTO published the 2019 Patent
Eligibility Guidance in the Federal Register on January 7, 2019, and sought
public comment on the guidance. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
The USPTO received numerous comments from the public. The public
comments include requests for further explanation of the following five
major themes: (1) Evaluation of whether a claim recites a judicial
exception; (2) the groupings of abstract ideas enumerated in the 2019
Patent Eligibility Guidance; (3) evaluation of whether a judicial
exception is integrated into a practical application; (4) the prima facie
case and the role of evidence with respect to eligibility rejections; and
(5) the application of the 2019 Patent Eligibility Guidance in the patent
examining corps.
The USPTO has now produced the October 2019 Patent Eligibility Guidance
Update responding to each of the major themes from the public comments. The
October 2019 Patent Eligibility Guidance Update also 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 2019
Patent Eligibility Guidance, including examples issued prior to the
publication of the 2019 Patent Eligibility Guidance. The third appendix
(Appendix 3) lists and discusses selected eligibility cases from the
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US PATENT AND TRADEMARK OFFICE |
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Supreme Court and the U.S. Court of Appeals for the Federal Circuit.
The October 2019 Patent Eligibility Guidance Update, including the
appendices, is available to the public on the USPTO's website
(https://www.uspto.gov/PatentEligibility). Feedback on the October 2019
Patent Eligibility Guidance Update or on any patent eligibility issue is
welcome on an ongoing basis. Instructions for submitting feedback are
provided in the Addresses section of this notice.
October 11, 2019 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1468 OG 206]