80 FR 45429 - July 2015 Update on Subject Matter Eligibility

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Federal Register Volume 80, Issue 146 (July 30, 2015)

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.

[Federal Register Volume 80, Number 146 (Thursday, July 30, 2015)]
[Rules and Regulations]
[Page 45429]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2015-18628]



[[Page 45429]]

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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.

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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: 
[email protected]. 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 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.

    Dated: July 15, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-18628 Filed 7-29-15; 8:45 am]
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