Director's Forum: A Blog from USPTO's Leadership
Director's Forum: A Blog from USPTO's Leadership
Monday Dec 15, 2014

Guidance on Subject Matter Eligibility Issued

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Following the valuable feedback that we received from the public through written comments and multiple public meetings over the last several months, we are issuing new examination guidance on subject matter eligibility under § 101 in view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo. You can find the guidance in a Federal Register notice officially published on December 16, 2014, entitled “2014 Interim Guidance on Patent Subject Matter Eligibility.” Claim examples have been developed to illustrate the analysis set forth in the guidance. A set of examples relating to nature-based products are posted on the USPTO website and a set of examples relating to abstract ideas will be released shortly. This guidance is the latest but not necessarily the last iteration of our ongoing implementation of these Supreme Court decisions.

I want to address two aspects about the 2014 Interim Eligibility Guidance in particular. First, the guidance explains the USPTO's interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court decisions and  sets forth an integrated approach for patent examiners in making determinations regarding subject matter eligibility. This guidance incorporates principles emphasized in Alice Corp. and provides more details than our initial examination instructions issued immediately after the Alice Corp. decision. 

Second, the guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision.

More specifically, you may recall that earlier this year we released preliminary examination guidance on evaluating eligibility of claims reciting laws of nature, natural phenomena, and natural products in the wake of Myriad and Mayo. Following that release, the Supreme Court issued the Alice Corp. decision and as per usual, we issued preliminary instructions on eligibility determinations of claims directed to abstract ideas. We sought public feedback on both sets of guidance, through written comments as well as a number of public events. We were pleased to receive numerous comments on both sets of guidance from a diverse group of stakeholders, including legal organizations, industry organizations, law firms, corporate entities, universities, and individuals. We carefully considered input from the public and our own patent examiners in addressing possible revisions both to our guidance stemming from Myriad and Mayo as well as Alice Corp. That led us to make changes to our analysis of subject matter eligibility under § 101, now set forth in the 2014 Interim Eligibility Guidance. We crafted this guidance to be a more straightforward eligibility analysis, one that promotes examination efficiency and consistency while conforming with the principles in the Supreme Court decisions.

We will continue to solicit stakeholder feedback as we further refine our examination guidance. The Federal Register notice outlining our new guidance announces a 90-day written comment period, and we encourage the public to submit comments. In addition, we plan to host a public outreach forum on the 2014 Interim Eligibility Guidance in mid-January, where you will have the opportunity to provide input in person or via the web. Stay tuned for more details, which will be posted on our website.

Through regular public engagement in this process, we welcome and will consider all viewpoints as we continue to refine our examination procedures for claims for subject matter eligibility.

Comments:

Post a Comment:

Note: This is a moderated blog; all comments are limited to 1,000 characters and will be reviewed before posting. For detailed policy information on this and other parts of the USPTO Web site, see Terms of Use and Privacy Policy pages.

Comments are closed for this entry.
This page is owned by Office of the Chief Communications Officer.