The 2014 Interim Guidance on Patent Subject Matter Eligibility (2014 IEG) is 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 2014 IEG 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 July 2015 Update: Subject Matter Eligibility updates the 2014 IEG in response to public comments on the 2014 IEG. 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 IEG during the patent examination process.
The May 2016 Subject Matter Eligibility Update provides (i) a memorandum to the examining corps on best practices in formulating a subject matter eligibility rejection and evaluating the applicant’s response, (ii) additional subject matter eligibility examples in the life science area, and (iii) an open-ended comment period to allow ongoing comments on subject matter eligibility topics. The May 2016 Subject Matter Eligibility Update also announces the selection of subject matter eligibility rejections as a new case study under the Topic Submission for Case Studies Pilot Program.
- 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 Decisions [updated Nov. 4, 2015]
- July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet (July 30, 2015)
- Federal Register Notice: May 2016 Subject Matter Eligibility UpdateNEW
- May 2016 Update: Memorandum - Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection (May 4, 2016) NEW
- May 2016 Update: Subject Matter Eligibility Examples: Life Sciences (May 6, 2016) NEW
- May 2016 Update: Index of Eligibility Examples (May 6, 2016) NEW
- May 2016 Update: Subject Matter Eligibility Court Decisions (Formerly Appendix 3) [updated May 17, 2016] NEW
- May 2016 Update: Memorandum - Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automative, LLC) (May 19, 2016) NEW
- 2014 Interim Guidance on Patent Subject Matter Eligibility
- Analyzing Nature-Based Products (For use with the Nature-Based Product Examples - December 16, 2014)
- Abstract Idea Workshop II Materials (For use with the July 2015 Update Appendix 1: Examples - July 30, 2015) (February 2016)
- 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]
- 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 May 2016 Subject Matter Eligibility Update, including the life sciences examples.
Any member of the public may submit written comments 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.
The comment period is open-ended, and comments will be accepted on an ongoing basis.