[Federal Register Volume 70, Number 243 (Tuesday, December 20, 2005)]
[Notices]
[Pages 75451-75452]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E5-7552]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: 2005-P-072]
RIN 0651-AB98


Request for Comments on Interim Guidelines for Examination of 
Patent Applications for 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, in 
response to recent case law, revised its guidelines to be used 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. The USPTO is requesting comments from the public 
regarding these interim examination guidelines.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before June 30, 2006. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to [email protected]. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or 
by facsimile to (571) 273-0125, marked to the attention of Linda 
Therkorn. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet. If comments are 
submitted by mail, the Office prefers that the comments be submitted on 
a DOS formatted 3 1/2 inch disk accompanied by a paper copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    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: Linda Therkorn, Office of the Deputy 
Commissioner for Patent Examination Policy, by telephone at 571-272-
8800, or Ray Chen, Office of the Solicitor, by telephone at 571-272-
9035, by mail addressed to: Mail Stop Comments, P.O. Box 1450, 
Alexandria, VA, 22313-1450, or by facsimile transmission to 571-273-
0125, marked to the attention of Linda Therkorn or Ray Chen.

SUPPLEMENTARY INFORMATION: The USPTO has published a notice setting 
forth interim guidelines for the examination of patent applications for 
patent subject matter eligibility under 35 U.S.C. 101. See Interim 
Guidelines for Examination of Patent Applications for Patent Subject 
Matter Eligibility, 1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005) 
(Patent Subject Matter Eligibility Interim Guidelines).
    The Patent Subject Matter Eligibility Interim Guidelines 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 Patent Subject Matter 
Eligibility Interim Guidelines do not constitute substantive rule 
making and hence do not have the force and effect of law. The Patent 
Subject Matter Eligibility Interim Guidelines have been designed to 
assist USPTO personnel in analyzing claimed subject matter for 
compliance with substantive law. Rejections will be based upon the 
substantive law and it is these rejections which are appealable. 
Consequently,

[[Page 75452]]

any failure by USPTO personnel to follow the Patent Subject Matter 
Eligibility Interim Guidelines is neither appealable nor petitionable.
    The Patent Subject Matter Eligibility Interim Guidelines 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 Patent Subject Matter 
Eligibility Interim Guidelines are interpretive or relate only to 
agency practice and procedure, and prior notice and an opportunity for 
public comment are not required under 5 U.S.C. 553(b)(A) (or any other 
law). Nevertheless, the USPTO is providing this opportunity for public 
comment because the USPTO desires the benefit of public comment on the 
Patent Subject Matter Eligibility Interim Guidelines.
    The USPTO is particularly interested in comments addressing the 
following questions:
    (1) While the Patent Subject Matter Eligibility Interim Guidelines 
explain that physical transformation of an article or physical object 
to a different state or thing to another establishes that a claimed 
invention is eligible for patent protection, Annex III to the Patent 
Subject Matter Eligibility Interim Guidelines explains that identifying 
that a claim transforms data from one value to another is not by itself 
sufficient for establishing that the claim is eligible for patent 
protection. Therefore, claims that perform data transformation must 
still be examined for whether there is a practical application of an 
abstract idea that produces a useful, concrete, and tangible result. Is 
the distinction between physical transformation and data transformation 
appropriate in the context of the Patent Subject Matter Eligibility 
Interim Guidelines? If not, please explain why and provide support for 
an alternative analysis.
    (2) Is the USPTO interpretation of State Street Bank & Trust Co. v. 
Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. 
Cir. 1998), as holding that if there is no physical transformation, a 
claimed invention must necessarily, either expressly or inherently, 
produce a useful, concrete, and tangible result (rather than just be 
``capable of'' producing such a result) either too broad or too narrow? 
If so, please suggest an alternative interpretation and reasons 
therefor.
    (3) As the courts have yet to define the terms ``useful,'' 
``concrete,'' and ``tangible'' in the context of the practical 
application requirement, are the explanations provided in the Patent 
Subject Matter Eligibility Interim Guidelines sufficient? If not, 
please suggest alternative explanations.
    (4) What role should preemption have in the determination of 
whether a claimed invention is directed to a practical application of a 
35 U.S.C. 101 judicial exception?
    (5) Annex IV to the Patent Subject Matter Eligibility Interim 
Guidelines explains why the USPTO considers claims to signals per se, 
whether functional descriptive material or non-functional descriptive 
material, to be nonstatutory subject matter. Does the USPTO analysis 
represent a reasonable extrapolation of relevant case law? If not, 
please explain why and provide support for an alternative analysis. If 
claims directed to a signal per se are determined to be statutory 
subject matter, what is the potential impact on internet service 
providers, satellites, wireless fidelity (WiFi [reg]), and 
other carriers of signals?
    The USPTO also notes that the U.S. Supreme Court has granted 
certiorari in Laboratory Corp. of America Holdings v. Metabolite 
Laboratories, Inc., S.Ct. No. 04-607 (LabCorp). See 546 U.S. ---- (Nov. 
2, 2005). The USPTO expects that a decision in LabCorp will be rendered 
sometime before the end of June 2006. Since the Court's decision in 
LabCorp may impact the broader question of patent subject matter 
eligibility under 35 U.S.C. 101, the USPTO is extending the period for 
public comment on the USPTO's Patent Subject Matter Eligibility Interim 
Guidelines until June 30, 2006. The USPTO will publish a notice further 
extending the period for public comment on the USPTO's Patent Subject 
Matter Eligibility Interim Guidelines if necessary to permit the 
comments to take into account the Court's decision in LabCorp.

    Dated: December 14, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E5-7552 Filed 12-19-05; 8:45 am]
BILLING CODE 3510-16-P