The USPTO has issued the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for USPTO personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. 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 has produced an update pertaining to patent subject matter eligibility titled July 2015 Update: Subject Matter Eligibility in response to the public comment on the 2014 Interim Patent Eligibility Guidance. The July 2015 Update includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update.
MATERIALS
- Federal Register Notice: 2014 Interim Guidance on Patent Subject Matter Eligibility
- 2014 Interim Eligibility Guidance Quick Reference Sheet (December 2014)
- Nature-Based Product Examples (December 16, 2014)
- Abstract Idea Examples (January 27, 2015)
- Federal Register Notice: July 2015 Update on Subject Matter Eligibility
- July 2015 Update: Subject Matter Eligibility (July 30, 2015)
- July 2015 Update Appendix 1: Examples (July 30, 2015)
- July 2015 Update Appendix 2: Index of Eligibility Examples (July 30, 2015)
- July 2015 Update Appendix 3: Subject Matter Eligibility Court DecisionsNEW [updated Nov. 4, 2015]
- July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet (July 30, 2015)
- Training
- 2014 Interim Guidance on Patent Subject Matter Eligibility
- Computer Based Training [CBT] [posted March 6, 2015]
- CBT Slides (February 2015) [PDF]
- Analyzing Nature-Based Products (For use with the Nature-Based Product Examples - December 16, 2014)
- Computer Based Training [CBT] [posted July 14, 2015]
- CBT Slides (February 2015) [PDF]
- Abstract Idea Workshop Materials (For use with the Abstract Idea Examples - January 27, 2015) (May 2015)
- Blank Worksheet (Abstract Idea)
- Court Decision Chart Summary (Version 05/15/15) *The July 2015 Update Appendix 3: Subject Matter Eligibility Court Decisions (linked to above) is updated periodically - please refer to it for more recent judicial developments.
- Worksheet Example 1
- Worksheet Example 2
- Worksheet Example 3
- Worksheet Example 4
- Worksheet Example 5
- Worksheet Example 6
- Worksheet Example 7
- Worksheet Example 8
- Blank Worksheet (Generic Exception)
- Refresher Training - 35 USC 101: Statutory Requirements and Four Categories of Invention [Step 1 of the December 2014 IEG Flowchart] [posted September 24, 2015]
- 2014 Interim Guidance on Patent Subject Matter Eligibility
- Caselaw
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S.Ct. 2347, 110 USPQ2d 1976 (2014)
- Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S.Ct. 2107, 106 USPQ2d 1972 (2013)
- Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012)
HOW TO COMMENT
The USPTO is interested in receiving public feedback on the July 2015 Update: Subject Matter Eligibility, including the claim examples.
Any member of the public may submit written comments 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 October 28, 2015.