80_FR_45575 80 FR 45429 - July 2015 Update on Subject Matter Eligibility

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)

Page Range45429-45429
FR Document2015-18628

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 Issue 146 (Thursday, July 30, 2015) 
[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]
BILLING CODE 3510-16-P

Federal Register / Vol. 80, No. 146 / Thursday, July 30, 2015 / Rules and Regulations 45429 DEPARTMENT OF COMMERCE Patent Legal Administration, by July 2015 Update: Subject Matter telephone at 571–272–7728, or Michael Eligibility. United States Patent and Trademark Cygan, Senior Legal Advisor, Office of Dated: July 15, 2015. Office Patent Legal Administration, by Michelle K. Lee, telephone at 571–272–7700. 37 CFR Part 1 Under Secretary of Commerce for Intellectual SUPPLEMENTARY INFORMATION: The 2014 Property and Director of the United States [Docket No.: PTO–P–2015–0034] Interim Patent Eligibility Guidance, Patent and Trademark Office. prepared for use by USPTO personnel in [FR Doc. 2015–18628 Filed 7–29–15; 8:45 am] July 2015 Update on Subject Matter determining subject matter eligibility BILLING CODE 3510–16–P Eligibility under 35 U.S.C. 101, was published in AGENCY: United States Patent and the Federal Register on December 16, Trademark Office, Commerce. 2014. See 2014 Interim Guidance on ENVIRONMENTAL PROTECTION Patent Subject Matter Eligibility, 79 FR AGENCY ACTION: Update; Request for comments. 74618 (Dec. 16, 2014). The USPTO also SUMMARY: The United States Patent and sought public comment on the 2014 40 CFR Part 52 Trademark Office (USPTO) prepared Interim Patent Eligibility Guidance, along with additional suggestions on [EPA–R10–OAR–2015–0330; FRL–9931–46- interim guidance (2014 Interim Patent Region 10] Eligibility Guidance) for use by USPTO claim examples for explanatory example personnel in determining subject matter sets. Approval and Promulgation of eligibility in view of then-recent The USPTO received over sixty Implementation Plans; Washington: decisions by the U.S. Supreme Court comments from the public. The public Interstate Transport of Fine Particulate (Supreme Court). The USPTO published comments include the following six Matter the 2014 Interim Patent Eligibility major themes: (1) requests for additional Guidance in the Federal Register, and examples, particularly for claims AGENCY: Environmental Protection sought public comment on the 2014 directed to abstract ideas and laws of Agency. Interim Patent Eligibility Guidance. The nature; (2) further explanation of the ACTION: Final rule. USPTO has since produced an update markedly different characteristics pertaining to patent subject matter analysis; (3) further information SUMMARY: The Clean Air Act (CAA) eligibility titled July 2015 Update: regarding how examiners identify requires each State Implementation Plan Subject Matter Eligibility, which is abstract ideas; (4) discussion of the (SIP) to contain adequate provisions available to the public on the USPTO’s prima facie case and the role of prohibiting air emissions that will have Internet Web site, in response to the evidence with respect to eligibility certain adverse air quality effects in public comment on the 2014 Interim rejections; (5) information regarding other states. On May 11, 2015, the State Patent Eligibility Guidance. The July application of the 2014 Interim Patent of Washington submitted a SIP revision 2015 Update: Subject Matter Eligibility Eligibility Guidance in the Patent to the Environmental Protection Agency includes a new set of examples and Examining Corps; and (6) explanation of (EPA) to address certain interstate discussion of various issues raised by the role of preemption in the eligibility transport requirements with respect to the public comments, and is intended to analysis, including a discussion of the the 2006 24-hour fine particulate matter assist examiners in applying the 2014 streamlined analysis. (PM2.5) National Ambient Air Quality Interim Patent Eligibility Guidance The USPTO has produced a July 2015 Standards (NAAQS). The EPA has during the patent examination process. Update: Subject Matter Eligibility determined that Washington adequately The USPTO is now seeking public responding to each of the six major addressed these CAA interstate comment on the July 2015 Update: themes from the public comments. The transport requirements for the 2006 24- Subject Matter Eligibility. July 2015 Update: Subject Matter hour PM2.5 NAAQS. COMMENT DEADLINE DATE: To be ensured Eligibility includes three appendices. DATES: This final rule is effective August of consideration, written comments on The first appendix (Appendix 1) 31, 2015. July 2015 Update: Subject Matter provides new examples that are ADDRESSES: The EPA has established a Eligibility must be received on or before illustrative of major themes from the docket for this action under Docket ID October 28, 2015. comments. The second appendix No. EPA–R10–OAR–2015–0330. All ADDRESSES: Comments on the July 2015 (Appendix 2) is a comprehensive index documents in the docket are listed on Update: Subject Matter Eligibility must of examples for use with the 2014 the www.regulations.gov Web site. be sent by electronic mail message over Interim Patent Eligibility Guidance, Although listed in the index, some the Internet addressed to: 2014_interim_ including new and previously issued information is not publicly available, guidance@uspto.gov. Electronic examples. The third appendix e.g., Confidential Business Information comments submitted in plain text are (Appendix 3) lists and discusses (CBI) or other information the disclosure preferred, but also may be submitted in selected eligibility cases from the of which is restricted by statute. Certain ADOBE® portable document format or Supreme Court and the U.S. Court of other material, such as copyrighted MICROSOFT WORD® format. The Appeals for the Federal Circuit. The July material, is not placed on the Internet comments will be available for viewing 2015 Update: Subject Matter Eligibility and will be publicly available only in via the Office’s Internet Web site (http:// is intended to assist examiners in hard copy form. Publicly available www.uspto.gov). Because comments will applying the 2014 Interim Patent docket materials are available either be made available for public inspection, Eligibility Guidance during the patent electronically through Lhorne on DSK7TPTVN1PROD with RULES information that the submitter does not examination process. www.regulations.gov or in hard copy at desire to make public, such as an The July 2015 Update: Subject Matter the Air Programs Unit, Office of Air, address or phone number, should not be Eligibility, including the appendices, Waste and Toxics, EPA Region 10, 1200 included in the comments. are available to the public on the Sixth Avenue, Seattle, WA, 98101. The FOR FURTHER INFORMATION CONTACT: Raul USPTO’s Internet Web site. The USPTO EPA requests that if at all possible, you Tamayo, Senior Legal Advisor, Office of is now seeking public comment on the contact the individual listed in the FOR VerDate Sep<11>2014 13:32 Jul 29, 2015 Jkt 235001 PO 00000 Frm 00035 Fmt 4700 Sfmt 4700 E:\FR\FM\30JYR1.SGM 30JYR1


Document Created: 2018-02-23 09:30:01
Document Modified: 2018-02-23 09:30:01
CategoryRegulatory Information
CollectionFederal Register
sudoc ClassAE 2.7:
GS 4.107:
AE 2.106:
PublisherOffice of the Federal Register, National Archives and Records Administration
SectionRules and Regulations
ActionUpdate; Request for comments.
DatesSubject 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.
ContactRaul 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.
FR Citation80 FR 45429 
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