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
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 email@example.com.
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,
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 firstname.lastname@example.org
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
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 email@example.com or firstname.lastname@example.org.
Copyright © 2014 Robert Moll. All rights reserved.