81 FR 27381 - May 2016 Subject Matter Eligibility Update
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office Federal Register Volume 81, Issue 88 (May 6, 2016)
United States Patent and Trademark Office
Federal Register Volume 81, Issue 88 (May 6, 2016)
| Page Range | 27381-27382 | |
| FR Document | 2016-10724 |
[Federal Register Volume 81, Number 88 (Friday, May 6, 2016)] [Proposed Rules] [Pages 27381-27382] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2016-10724] ======================================================================= ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Part 1 [Docket No.: PTO-P-2016-0003] May 2016 Subject Matter Eligibility Update AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Request for comments. ----------------------------------------------------------------------- SUMMARY: The United States Patent and Trademark Office (USPTO) issued the July 2015 Update: Subject Matter Eligibility (July 2015 Update) to provide further guidance to examiners in determining subject matter eligibility under 35 U.S.C. 101. The USPTO announced the July 2015 Update in the Federal Register, and sought public comment on the July 2015 Update. The USPTO has since issued a memorandum to the Patent Examining Corps titled ``Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection'' in response to those public comments, which is available to the public on the USPTO's Internet Web site. The memorandum seeks to improve examiner correspondence with regard to subject matter eligibility rejections. Further, additional life science examples to assist examiners in making eligibility determinations have been published and are available on the USPTO's Internet Web site. The USPTO is now seeking public comment on subject matter eligibility on an on-going basis. DATES: The comment period is open-ended, and comments will be accepted on an ongoing basis. ADDRESSES: Comments 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: Regarding the examiner memorandum, contact Matthew Sked, by telephone at 571-272-7627, or Carolyn Kosowski, by telephone at 571-272-7688, both at the Office of Patent Legal Administration. Regarding the life science examples, contact June Cohan, by telephone at 571-272-7744, Ali Salimi, by telephone at 571- 272-0909, or Raul Tamayo, by telephone at 571-272-7728, all at the Office of Patent Legal Administration. SUPPLEMENTARY INFORMATION: On July 30, 2015, the USPTO issued the July 2015 Update to provide further guidance on subject matter eligibility in view of public comments received in response to the 2014 Interim Guidance on Patent Subject Matter Eligibility. An announcement was published in the Federal Register seeking public comment on the July 2015 Update. See July 2015 Update on Subject Matter Eligibility, 80 FR 45429 (July 30, 2015). In response, the USPTO received a total of thirty-seven submissions from the public, which have been carefully considered by the USPTO. The USPTO has issued a memorandum to the Patent Examining Corps titled ``Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection'' to improve examiner correspondence regarding subject matter eligibility rejections. A copy of the memorandum is available on the USPTO's Internet Web site, on the patent examination guidance and training materials Web page (http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials). In particular, the memorandum provides guidance to examiners on (1) formulating a subject matter eligibility rejection; and (2) evaluating a response to a subject matter eligibility rejection. [[Page 27382]] The USPTO's guidance materials concerning the subject matter eligibility requirements of 35 U.S.C. 101, including the above- mentioned memorandum, do not constitute substantive rulemaking and do not have the force and effect of law. These guidance materials set out examination policy on rejections with respect to the Office's interpretation of the subject matter eligibility requirements of 35 U.S.C. 101 in view of decisions by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). The guidance materials were developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Failure of Office personnel to follow the USPTO's guidance materials is not, in itself, a proper basis for either an appeal or a petition. Additionally, the USPTO has produced new life science examples. A copy of the examples is available on the USPTO's Internet Web site, again on the patent examination guidance and training materials Web page (http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials). The examples provide exemplary subject matter eligibility analysis under 35 U.S.C. 101 of hypothetical claims and claims drawn from case law. The examples are intended as a teaching tool to assist examiners and the public in understanding how the Office would apply the eligibility guidance in certain fact-specific situations. The USPTO further solicited topics for study under the Topic Submission for Case Studies Pilot Program. See Request for Submission of Topics for USPTO Case Studies, 80 FR 79277 (Dec. 21, 2015). The case studies will include a review of consistency of the application of subject matter eligibility analyses under 35 U.S.C. 101 across the examining corps to determine the quality of the work product and indicate where improvements can be made to further improve consistency. The July 2015 Update included an Appendix 3 containing select eligibility decisions from the Supreme Court and the Federal Circuit. This chart of decisions assists examiners in identifying the types of subject matter courts have previously found to be ineligible. Appendix 3 will continue to be updated with Federal Circuit decisions having opinions (precedential or non-precedential). While non-precedential decisions are not binding precedent, the opinions provide guidance and persuasive reasoning as outlined in Fed. Cir. R. 32.1(d). Appendix 3 will also continue to be updated with Federal Circuit decisions without opinion (Fed. Cir. R. 36) on appeals originating from the Patent Trial and Appeal Board. Federal Circuit decisions affirming a district court decision without opinion (Fed. Cir. R. 36) will no longer be added to Appendix 3 because they provide little benefit to examiners or the public. As discussed previously, the memorandum and life science examples are available to the public on the USPTO's Internet Web site. The USPTO is now seeking public comment. The comment period is open-ended, and comments will be accepted on an ongoing basis. When it is determined that the period will close, advance notification will be made on the public comment Web page. The USPTO is particularly interested in public comments addressing the progress the USPTO is making in the quality of correspondence regarding subject matter eligibility rejections. Dated: May 2, 2016. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2016-10724 Filed 5-5-16; 8:45 am] BILLING CODE 3510-16-P
![Federal Register / Vol. 81, No. 88 / Friday, May 6, 2016 / Proposed Rules 27381
administering the Department’s at: www.gpo.gov/fdsys. At this site you DATES: The comment period is open-
programs and activities. can view this document, as well as all ended, and comments will be accepted
Through this priority, working other documents of this Department on an ongoing basis.
interpreters will receive training in a published in the Federal Register, in ADDRESSES: Comments must be sent by
specialty area in order to better meet the text or Portable Document Format electronic mail message over the
communication needs of individuals (PDF). To use PDF you must have Internet addressed to: 2014_interim_
who are deaf, including consumers of Adobe Acrobat Reader, which is guidance@uspto.gov. Electronic
VR. The training ultimately will available free at the site. You may also comments submitted in plain text are
improve the quality of VR services and access documents of the Department preferred, but also may be submitted in
the competitive integrated employment published in the Federal Register by ADOBE® portable document format or
outcomes achieved by individuals with using the article search feature at: MICROSOFT WORD® format. The
disabilities. This priority would www.federalregister.gov. Specifically, comments will be available for viewing
promote the efficient and effective use through the advanced search feature at via the Office’s Internet Web site (http://
of Federal funds. this site, you can limit your search to www.uspto.gov). Because comments will
Paperwork Reduction Act of 1995 documents published by the be made available for public inspection,
Department. information that the submitter does not
As part of its continuing effort to
reduce paperwork and respondent Dated: May 3, 2016. desire to make public, such as an
burden, the Department provides the Michael K. Yudin, address or phone number, should not be
general public and Federal agencies Assistant Secretary for Special Education and included in the comments.
with an opportunity to comment on Rehabilitative Services. FOR FURTHER INFORMATION CONTACT:
proposed and continuing collections of [FR Doc. 2016–10718 Filed 5–5–16; 8:45 am] Regarding the examiner memorandum,
information in accordance with the BILLING CODE 4000–01–P contact Matthew Sked, by telephone at
Paperwork Reduction Act of 1995 (PRA) 571–272–7627, or Carolyn Kosowski, by
(44 U.S.C. 3506(c)(2)(A)). This helps telephone at 571–272–7688, both at the
ensure that: The public understands the DEPARTMENT OF COMMERCE Office of Patent Legal Administration.
Department’s collection instructions, Regarding the life science examples,
respondents can provide the requested United States Patent and Trademark contact June Cohan, by telephone at
data in the desired format, reporting Office 571–272–7744, Ali Salimi, by telephone
burden (time and financial resources) is at 571–272–0909, or Raul Tamayo, by
minimized, collection instruments are 37 CFR Part 1 telephone at 571–272–7728, all at the
clearly understood, and the Department [Docket No.: PTO–P–2016–0003] Office of Patent Legal Administration.
can properly assess the impact of
SUPPLEMENTARY INFORMATION: On July
collection requirements on respondents. May 2016 Subject Matter Eligibility 30, 2015, the USPTO issued the July
This proposed priority contains Update 2015 Update to provide further
information collection requirements that
AGENCY: United States Patent and guidance on subject matter eligibility in
are approved by OMB under the
Trademark Office, Commerce. view of public comments received in
National Interpreter Education program
ACTION: Request for comments.
response to the 2014 Interim Guidance
1820–0018; this proposed regulation
on Patent Subject Matter Eligibility. An
does not affect the currently approved
SUMMARY: The United States Patent and announcement was published in the
data collection.
Intergovernmental Review: This Trademark Office (USPTO) issued the Federal Register seeking public
program is subject to Executive Order July 2015 Update: Subject Matter comment on the July 2015 Update. See
12372 and the regulations in 34 CFR Eligibility (July 2015 Update) to provide July 2015 Update on Subject Matter
part 79. One of the objectives of the further guidance to examiners in Eligibility, 80 FR 45429 (July 30, 2015).
Executive order is to foster an determining subject matter eligibility In response, the USPTO received a
intergovernmental partnership and a under 35 U.S.C. 101. The USPTO total of thirty-seven submissions from
strengthened federalism. The Executive announced the July 2015 Update in the the public, which have been carefully
order relies on processes developed by Federal Register, and sought public considered by the USPTO. The USPTO
State and local governments for comment on the July 2015 Update. The has issued a memorandum to the Patent
coordination and review of proposed USPTO has since issued a memorandum Examining Corps titled ‘‘Formulating a
Federal financial assistance. to the Patent Examining Corps titled Subject Matter Eligibility Rejection and
This document provides early ‘‘Formulating a Subject Matter Evaluating the Applicant’s Response to
notification of our specific plans and Eligibility Rejection and Evaluating the a Subject Matter Eligibility Rejection’’ to
actions for this program. Applicant’s Response to a Subject improve examiner correspondence
Accessible Format: Individuals with Matter Eligibility Rejection’’ in response regarding subject matter eligibility
disabilities can obtain this document in to those public comments, which is rejections. A copy of the memorandum
an accessible format (e.g., braille, large available to the public on the USPTO’s is available on the USPTO’s Internet
print, audiotape, or compact disc) on Internet Web site. The memorandum Web site, on the patent examination
request to the program contact person seeks to improve examiner guidance and training materials Web
listed under FOR FURTHER INFORMATION correspondence with regard to subject page (http://www.uspto.gov/patent/
CONTACT. matter eligibility rejections. Further, laws-and-regulations/examination-
Lhorne on DSK30JT082PROD with PROPOSALS
Electronic Access to This Document: additional life science examples to policy/examination-guidance-and-
The official version of this document is assist examiners in making eligibility training-materials). In particular, the
the document published in the Federal determinations have been published memorandum provides guidance to
Register. Free Internet access to the and are available on the USPTO’s examiners on (1) formulating a subject
official edition of the Federal Register Internet Web site. The USPTO is now matter eligibility rejection; and (2)
and the Code of Federal Regulations is seeking public comment on subject evaluating a response to a subject matter
available via the Federal Digital System matter eligibility on an on-going basis. eligibility rejection.
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![27382 Federal Register / Vol. 81, No. 88 / Friday, May 6, 2016 / Proposed Rules
The USPTO’s guidance materials or non-precedential). While non- address the GHG permitting
concerning the subject matter eligibility precedential decisions are not binding requirements for sources already subject
requirements of 35 U.S.C. 101, precedent, the opinions provide to PSD for pollutants other than GHGs.
including the above-mentioned guidance and persuasive reasoning as We are proposing to disapprove those
memorandum, do not constitute outlined in Fed. Cir. R. 32.1(d). provisions to the extent they require
substantive rulemaking and do not have Appendix 3 will also continue to be PSD permitting for sources that emit
the force and effect of law. These updated with Federal Circuit decisions only GHGs above the thresholds
guidance materials set out examination without opinion (Fed. Cir. R. 36) on triggering the requirement to obtain a
policy on rejections with respect to the appeals originating from the Patent Trial PSD permit since that is no longer
Office’s interpretation of the subject and Appeal Board. Federal Circuit consistent with federal law. The EPA is
matter eligibility requirements of 35 decisions affirming a district court proposing this action under section 110
U.S.C. 101 in view of decisions by the decision without opinion (Fed. Cir. R. and part C of the Clean Air Act (CAA
U.S. Supreme Court and the U.S. Court 36) will no longer be added to Appendix or Act).
of Appeals for the Federal Circuit 3 because they provide little benefit to DATES: Written comments must be
(Federal Circuit). The guidance examiners or the public. received on or before June 6, 2016.
materials were developed as a matter of As discussed previously, the ADDRESSES: Submit your comments,
internal Office management and are not memorandum and life science examples identified by Docket No. EPA–R06–
intended to create any right or benefit, are available to the public on the OAR–2012–0022, at http://
substantive or procedural, enforceable USPTO’s Internet Web site. The USPTO www.regulations.gov or via email to
by any party against the Office. is now seeking public comment. The wiley.adina@epa.gov. Follow the online
Rejections will continue to be based comment period is open-ended, and instructions for submitting comments.
upon the substantive law, and it is these comments will be accepted on an Once submitted, comments cannot be
rejections that are appealable. Failure of ongoing basis. When it is determined edited or removed from Regulations.gov.
Office personnel to follow the USPTO’s that the period will close, advance The EPA may publish any comment
guidance materials is not, in itself, a notification will be made on the public received to its public docket. Do not
proper basis for either an appeal or a comment Web page. The USPTO is submit electronically any information
petition. particularly interested in public you consider to be Confidential
Additionally, the USPTO has comments addressing the progress the Business Information (CBI) or other
produced new life science examples. A USPTO is making in the quality of information whose disclosure is
copy of the examples is available on the correspondence regarding subject matter restricted by statute. Multimedia
USPTO’s Internet Web site, again on the eligibility rejections. submissions (audio, video, etc.) must be
patent examination guidance and
Dated: May 2, 2016. accompanied by a written comment.
training materials Web page (http://
www.uspto.gov/patent/laws-and- Michelle K. Lee, The written comment is considered the
regulations/examination-policy/ Under Secretary of Commerce for Intellectual official comment and should include
examination-guidance-and-training- Property and Director of the United States discussion of all points you wish to
materials). The examples provide Patent and Trademark Office. make. The EPA will generally not
exemplary subject matter eligibility [FR Doc. 2016–10724 Filed 5–5–16; 8:45 am] consider comments or comment
analysis under 35 U.S.C. 101 of BILLING CODE 3510–16–P
contents located outside of the primary
hypothetical claims and claims drawn submission (i.e. on the web, cloud, or
from case law. The examples are other file sharing system). For
intended as a teaching tool to assist additional submission methods, please
ENVIRONMENTAL PROTECTION
examiners and the public in contact Ms. Adina Wiley, (214) 665–
AGENCY
understanding how the Office would 2115, wiley.adina@epa.gov. For the full
apply the eligibility guidance in certain 40 CFR Part 52 EPA public comment policy,
fact-specific situations. information about CBI or multimedia
[EPA–R06–OAR–2012–0022; FRL–9946–11– submissions, and general guidance on
The USPTO further solicited topics
Region 6] making effective comments, please visit
for study under the Topic Submission
for Case Studies Pilot Program. See http://www2.epa.gov/dockets/
Approval and Promulgation of
Request for Submission of Topics for commenting-epa-dockets.
Implementation Plans; Louisiana; Docket: The index to the docket for
USPTO Case Studies, 80 FR 79277 (Dec. Permitting of Greenhouse Gases
21, 2015). The case studies will include this action is available electronically at
a review of consistency of the AGENCY: Environmental Protection www.regulations.gov and in hard copy
application of subject matter eligibility Agency (EPA). at the EPA Region 6, 1445 Ross Avenue,
analyses under 35 U.S.C. 101 across the ACTION: Proposed rule.
Suite 700, Dallas, Texas. While all
examining corps to determine the documents in the docket are listed in
quality of the work product and indicate SUMMARY: The Environmental Protection the index, some information may be
where improvements can be made to Agency (EPA) is proposing to partially publicly available only at the hard copy
further improve consistency. approve and partially disapprove a location (e.g., copyrighted material), and
The July 2015 Update included an revision to the Louisiana State some may not be publicly available at
Appendix 3 containing select eligibility Implementation Plan (SIP) submitted by either location (e.g., CBI). FOR FURTHER
decisions from the Supreme Court and the State of Louisiana on December 21, INFORMATION CONTACT: Adina Wiley,
Lhorne on DSK30JT082PROD with PROPOSALS
the Federal Circuit. This chart of 2011. This revision outlines the State’s (214) 665–2115, wiley.adina@epa.gov.
decisions assists examiners in program to regulate and permit To inspect the hard copy materials,
identifying the types of subject matter emissions of greenhouse gases (GHGs) please schedule an appointment with
courts have previously found to be in the Louisiana Prevention of Ms. Wiley or Mr. Bill Deese at 214–665–
ineligible. Appendix 3 will continue to Significant Deterioration (PSD) program. 7253.
be updated with Federal Circuit We are proposing to approve those SUPPLEMENTARY INFORMATION:
decisions having opinions (precedential provisions to the extent that they Throughout this document wherever
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Document Created: 2016-05-06 00:29:40
Document Modified: 2016-05-06 00:29:40
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Proposed Rules | |
| Action | Request for comments. | |
| Dates | Subject Matter Eligibility (July 2015 Update) to provide further guidance to examiners in determining subject matter eligibility under 35 U.S.C. 101. The USPTO announced the July 2015 Update in the Federal Register, and sought public comment on the July 2015 Update. The USPTO has since issued a memorandum to the Patent Examining Corps titled ``Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection'' in response to those public comments, which is available to the public on the USPTO's Internet Web site. The memorandum seeks to improve examiner correspondence with regard to subject matter eligibility rejections. Further, additional life science examples to assist examiners in making eligibility determinations have been published and are available on the USPTO's Internet Web site. The USPTO is now seeking public comment on subject matter eligibility on an on-going basis. | |
| Contact | Regarding the examiner memorandum, contact Matthew Sked, by telephone at 571-272-7627, or Carolyn Kosowski, by telephone at 571-272-7688, both at the Office of Patent Legal Administration. Regarding the life science examples, contact June Cohan, by telephone at 571-272-7744, Ali Salimi, by telephone at 571- 272-0909, or Raul Tamayo, by telephone at 571-272-7728, all at the Office of Patent Legal Administration. | |
| FR Citation | 81 FR 27381 |
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