New Update on Subject Matter Eligibility to be Published on July 30th

By Kevin E. Noonan --

The U.S. Patent and Trademark Office will publish a Notice on July 30th that the Office is updating their procedures for determining subject matter eligibility.  A copy of this Notice can be found here.  The update will contain three appendices:

• Appendix 1 provides new examples that are illustrative of major themes from the comments received by the Office concerning its Revised Guidance published December 16, 2014 (2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (Dec. 16, 2014)) (see "USPTO Issues Interim Guidance on Subject Matter Eligibility").

• Appendix 2 provides a comprehensive index of examples for use with the 2014 Interim Patent Eligibility Guidance, including new and previously issued examples.

• Appendix 3 lists and discusses selected eligibility cases from the Supreme Court and the U.S. Court of Appeals for the Federal Circuit.

These appendices are likely to be posted here on the USPTO website.

According to the Notice, the Office received "over sixty" comments regarding the December 16, 2014 Interim Guidance provoked that encompassed 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.

This Update is intended to address these themes.

The Office is also soliciting comments, expected to have a deadline of 90 days after the publication date of the Notice (October 28, 2015).

As stated in the Notice:

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® portable document format or MICROSOFT WORD® format.  The comments will be available for viewing via the Office's Internet Web site (http://www.uspto.gov).

The USPTO contacts are Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, who can be reached by telephone at 571-272-7728, or Michael Cygan, Senior Legal Advisor, Office of Patent Legal Administration, who can be reached by telephone at 571-272- 7700.

Comments

[EG]

Kevin,

As Skeptical might say: "I Remain [Skeptical]."

[Paul Cole]

Comments are available now as indicated in the posting.

Much for our colleagues in computer science and business methods. Not much yet for the biotech area, but the USPTO says they are digesting Ariosa - watch that space.

When the pharma/biotech comments come out, what is the betting that they will finally drop the Amazonic Acid example?

[EG]

"what is the betting that they will finally drop the Amazonic Acid example?"

Paul,

I predict "slim and none" even though that example is utterly absurd.