[Federal Register Volume 80, Number 146 (Thursday, July 30, 2015)]
[Rules and Regulations]
[Page 45429]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[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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