[Federal Register Volume 79, Number 125 (Monday, June 30, 2014)]
[Notices]
[Page 36786]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-15352]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2014-0036]


Request for Comments and Extension of Comment Period on 
Examination Instruction and Guidance Pertaining to Patent-Eligible 
Subject Matter

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Supreme Court (Supreme Court) recently 
issued a decision in Alice Corporation Pty. Ltd. v. CLS Bank 
International (Alice Corp.), which dealt with claims to a computerized 
scheme for mitigating settlement risk. The Supreme Court held in a 
unanimous decision that the claimed subject matter was not patent-
eligible because it was drawn to the abstract idea of intermediated 
settlement implemented on a generic computer. The United States Patent 
and Trademark Office (USPTO) has issued preliminary instructions on 
Alice Corp. to the patent examining corps and these preliminary 
instructions have been posted on the USPTO's Internet Web site. The 
USPTO is inviting public comment on the Alice Corp. preliminary 
instructions. The USPTO is also extending the period for public comment 
on the Examination Guidance For Determining Subject Matter Eligibility 
Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and 
Natural Products (Laws of Nature/Natural Products Guidance).

DATES: Written comments on the Alice Corp. preliminary instructions 
and/or on the Laws of Nature/Natural Products Guidance must be received 
on or before July 31, 2014.

ADDRESSES: Comments on the Alice Corp. preliminary instructions may be 
sent by electronic mail message over the Internet addressed to: alice_2014@uspto.gov.
    Comments on the Laws of Nature/Natural Products Guidance may be 
sent by electronic mail message over the Internet addressed to: myriad-mayo_2014@uspto.gov.
    Comments that apply to both the Alice Corp. preliminary 
instructions and the Laws of Nature/Natural Products Guidance may be 
sent by electronic mail message over the Internet addressed to either: 
myriad-mayo_2014@uspto.gov, or alice_2014@uspto.gov.
    Electronic comments submitted in plain text are preferred, but also 
may be submitted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Comments not submitted electronically should be 
submitted on paper in a format that facilitates convenient digital 
scanning into ADOBE[supreg] portable document 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 
Caroline D. Dennison, Senior Legal Advisor, Office of Patent Legal 
Administration, by telephone at 571-272-7729.

SUPPLEMENTARY INFORMATION: The Supreme Court recently issued a decision 
in Alice Corp. (Alice Corporation Pty. Ltd. v. CLS Bank International, 
573 U.S.----(2014)), which dealt with claims to a computerized scheme 
for mitigating settlement risk. The Supreme Court held in a unanimous 
decision that the claimed subject matter in question was not patent-
eligible because it was drawn to the abstract idea of intermediated 
settlement implemented on a generic computer. The United States Patent 
and Trademark Office (USPTO) has issued preliminary instructions to the 
patent examining corps and these preliminary instructions are available 
on the USPTO's Internet Web site (patent examining corps guidance and 
instructions can be found at: http://www.uspto.gov/patents/law/exam/examguide.jsp). The USPTO is inviting public comment on the Alice Corp. 
preliminary instructions before providing more comprehensive guidance 
to the patent examining corps. Written comments on the Alice Corp. 
preliminary instructions must be received on or before July 31, 2014.
    The USPTO is also extending the period for public comment on the 
Laws of Nature/Natural Products Guidance. The USPTO published the Laws 
of Nature/Natural Products Guidance on its Internet Web site (as 
discussed previously, examining corps guidance and instructions can be 
found at: http://www.uspto.gov/patents/law/exam/examguide.jsp). The 
USPTO also published an announcement on its Internet Web site that it 
was hosting a public forum (conducted on May 9, 2014) and providing 
until June 30, 2014, for public comment on the Laws of Nature/Natural 
Products Guidance. See Notice of Forum on the Guidance For Determining 
Subject Matter Eligibility of Claims Reciting or Involving Laws of 
nature, Natural Phenomena, and Natural Products, 79 FR 21736 (Apr. 17, 
2014).
    The USPTO has received several requests from our stakeholders for 
additional time to submit comments on the Laws of Nature/Natural 
Products Guidance. In addition, the Supreme Court in Alice Corp. 
applied its framework from Mayo Collaborative Services v. Prometheus 
Laboratories, Inc., 566 U.S.----(2012), in determining whether the 
claims in Alice Corp. were directed to a patent-ineligible abstract 
idea. For these reasons, the USPTO is extending the period for public 
comment on the Laws of Nature/Natural Products Guidance until July 31, 
2014.

    Dated: June 25, 2014.
Margaret A. Focarino,
Commissioner for Patents.
[FR Doc. 2014-15352 Filed 6-27-14; 8:45 am]
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