Tuesday, December 16, 2014

USPTO - 2014 Interim Guidance on Patent Subject Matter Eligibility

The USPTO has published the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for examiners to use when determining subject matter eligibility under 35 U.S.C. 101 in view of U.S. Supreme Court decisions, including Alice Corp. v. CLS Bank, Association for Molecular Pathology v. Myriad, and Mayo Collaborative Serv. v. Prometheus Labs., Inc..

"The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad."

The USPTO expects to update the guidance in view of cases and in response to public feedback and gave the following claims to illustrate the analysis in the Interim Eligibility Guidance: Nature-Based Product Examples and promises to follow with abstract idea examples soon.

The USPTO is also seeking public comments:

"The USPTO is interested in receiving public feedback on the Interim Eligibility Guidance and the claim examples.  Comments may be submitted in writing.  Additionally, a public Eligibility Forum will be held where stakeholders will have an opportunity to provide oral feedback.  Details on submitting written comments and attending the Eligibility Forum follow below.

Any member of the public may submit written comments on the Interim Eligibility Guidance and claim example sets by electronic mail message over the Internet addressed to 2014_interim_guidance@uspto.gov.  Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format.  The comments will be available for public inspection here at this Web page.  Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.  Comments will be accepted until March 16, 2015.

A public forum will be hosted at the Alexandria campus of the USPTO on Jan. 21, 2015, to receive public feedback from any interested member of the public.  The Eligibility Forum will be an opportunity for the Office to provide an overview of the Interim Eligibility Guidance and for participants to present their interpretation of the impact of Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analysis during examination by providing oral feedback on the Interim Eligibility Guidance and claim example sets.  Individuals will be provided an opportunity to make a presentation, to the extent that time permits.

Date and Location:  The Eligibility Forum will be held on Jan. 21, 2015, from 1pm – 5pm EST, in the Madison Auditorium North (Concourse Level), Madison Building, 600 Dulany Street, Alexandria, VA 22314. The meeting will also be accessible via WebEx.

Requests for Attendance at the Eligibility Forum:  Requests for attendance to the Eligibility Forum should be submitted by electronic mail through the Internet to 2014_interim_guidance@uspto.gov by JAN. 9, 2015.

Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number.  An Internet e-mail address, if available, should also be provided. When requesting attendance, individuals should indicate whether they wish to make a formal presentation.  The Office will attempt to accommodate all persons wishing to make a presentation, but may need to limit the length or number of presentations given time constraints.  Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting.  Space is limited.  Accordingly, it may not be possible to accommodate all requests, and only those with an accepted attendance request will be permitted to attend.  If necessary, non-accepted requesters will be notified by the USPTO.  The meeting will also be accessible via WebEx. Access instructions will be posted on this page by the forum date.

In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm.  Therefore, organizations and law firms must designate their official representatives."

For more information, the USPTO recommends calling Raul Tamayo at (571) 272-7728 or Jennifer Lo at (571) 272- 7640 or sending an email to raul.tamayo@uspto.gov or jennifer.lo@uspto.gov.

Copyright © 2014 Robert Moll. All rights reserved.