[Federal Register Volume 74, Number 179 (Thursday, September 17, 2009)]
[Notices]
[Pages 47780-47781]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-22420]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2009-0037]


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.

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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 [email protected]. Comments may also be 
submitted by facsimile to (571) 273-0125, 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,

[[Page 47781]]

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.
[FR Doc. E9-22420 Filed 9-16-09; 8:45 am]
BILLING CODE 3510-16-P