E9-22420. Request for Comments on Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Request for comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO) has prepared interim examination instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101 (Interim Patent Subject Matter Eligibility Examination Instructions) pending a decision by the U.S. Supreme Court in Bilski v. Kappos. The Interim Patent Subject Matter Eligibility Examination Instructions will be for use by USPTO personnel in their review of patent applications to determine whether the claims in a patent application are directed to patent eligible subject matter under 35 U.S.C. 101. The USPTO is requesting comments from the public regarding the Interim Patent Subject Matter Eligibility Examination Instructions.

DATES:

Comment Deadline Date: To be ensured of consideration, written comments must be received on or before September 28, 2009. No public hearing will be held.

ADDRESSES:

Comments should be sent by electronic mail message over the Internet addressed to [e-mail]. Comments may also be submitted by facsimile to [phone], marked to the attention of Caroline D. Dennison. Although comments may be submitted by mail or facsimile, the USPTO prefers to receive comments via the Internet.

The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the Office Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT:

Caroline D. Dennison, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at 571-272-7729, or by facsimile transmission to 571-273-0125, marked to the attention of Caroline D. Dennison.

SUPPLEMENTARY INFORMATION:

The USPTO has prepared Interim Patent Subject Matter Eligibility Examination Instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101. The Interim Patent Subject Matter Eligibility Examination Instructions are based on the USPTO's current understanding of the law and are believed to be fully consistent with binding precedent of the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and the Federal Circuit's predecessor courts. The USPTO posted the Interim Patent Subject Matter Eligibility Examination Instructions on its Internet Web site (http://www.uspto.gov) on August 27, 2009, with a notice requesting public comment on the Interim Patent Subject Matter Eligibility Examination Instructions and indicating that written comments must be received on or before September 28, 2009, to be ensured of consideration.

The Interim Patent Subject Matter Eligibility Examination Instructions do not constitute substantive rule making and hence do not have the force and effect of law. Rejections are and will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any perceived failure by USPTO personnel to follow the Interim Patent Subject Matter Eligibility Examination Instructions is neither appealable nor petitionable.

The U.S. Supreme Court granted certiorari in Bilski, S.Ct. No. 08-964. See 556 U.S.___ (June 1, 2009). The USPTO expects that a decision in Bilski will be rendered sometime before the end of June 2010. The Interim Patent Subject Matter Eligibility Examination Instructions are to provide instructions to examiners pending a final decision from the Supreme Court in Bilski. Following the Supreme Court's decision in Bilski, the USPTO will revise its examination instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101 for consistency with the Supreme Court's decision.

The Interim Patent Subject Matter Eligibility Examination Instructions merely revise USPTO examination practice for consistency with the USPTO's current understanding of the case law regarding patent subject matter eligibility under 35 U.S.C. 101. Therefore, the Interim Patent Subject Matter Eligibility Examination Instructions relate only to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice. The USPTO is providing this opportunity for public comment because the USPTO desires the benefit of public comment on the Interim Patent Subject Matter Eligibility Examination Instructions; however, notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment rule making for “ `interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.' ” (quoting 5 U.S.C. 553(b)(A))). Persons submitting written comments should note that the USPTO may not provide a “comment and response” analysis of such comments as notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other law.

Dated: September 11, 2009.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.