[Federal Register Volume 84, Number 202 (Friday, October 18, 2019)]
[Notices]
[Pages 55942-55943]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-22782]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2019-0034]


October 2019 Patent Eligibility Guidance Update

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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[[Page 55943]]

SUMMARY: In January 2019, the United States Patent and Trademark Office 
(USPTO) prepared revised guidance (2019 Patent Eligibility Guidance) 
for use by USPTO personnel in evaluating subject matter eligibility. 
The USPTO published the 2019 Patent Eligibility Guidance in the Federal 
Register and sought public comment on the guidance. In view of the 
comments received in response to the 2019 Patent Eligibility Guidance, 
the USPTO has produced an update of its 2019 Patent Eligibility 
Guidance (the October 2019 Patent Eligibility Guidance Update), which 
is available to the public on the USPTO's website. The October 2019 
Patent Eligibility Guidance Update includes a new set of examples as 
well as a discussion of various issues raised by the public comments. 
The Update is intended to assist Office personnel in applying the 2019 
Patent Eligibility Guidance. The Office continues to welcome public 
feedback on an ongoing basis on the October 2019 Patent Eligibility 
Guidance Update or on any patent eligibility issue.

ADDRESSES: Comments must be submitted through the Federal eRulemaking 
Portal at https://www.regulations.gov. To submit comments via 
www.regulations.gov, enter docket number PTO-P-2019-0034 on the home 
page and click ``search.'' The site will provide a search results page 
listing all documents associated with this docket. Find a reference to 
this notice and click on the ``Comment Now!'' icon, complete the 
required fields, and enter or attach your comments. Attachments to 
electronic comments will be accepted in ADOBE[supreg] portable document 
format or MICROSOFT WORD[supreg] format. Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Carolyn Kosowski, at 571-272-7688, 
Matthew Sked, at 571-272-7627, or June Cohan, at 571-272-7744, all 
Senior Legal Advisors at the Office of Patent Legal Administration.

SUPPLEMENTARY INFORMATION: The USPTO prepared the 2019 Patent 
Eligibility Guidance for use by USPTO personnel in determining subject 
matter eligibility under 35 U.S.C. 101. The USPTO published the 2019 
Patent Eligibility Guidance in the Federal Register on January 7, 2019, 
and sought public comment on the guidance. See 2019 Revised Patent 
Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
    The USPTO received numerous comments from the public. The public 
comments include requests for further explanation of the following five 
major themes: (1) Evaluation of whether a claim recites a judicial 
exception; (2) the groupings of abstract ideas enumerated in the 2019 
Patent Eligibility Guidance; (3) evaluation of whether a judicial 
exception is integrated into a practical application; (4) the prima 
facie case and the role of evidence with respect to eligibility 
rejections; and (5) the application of the 2019 Patent Eligibility 
Guidance in the patent examining corps.
    The USPTO has now produced the October 2019 Patent Eligibility 
Guidance Update responding to each of the major themes from the public 
comments. The October 2019 Patent Eligibility Guidance Update also 
includes three appendices. The first appendix (Appendix 1) provides new 
examples that are illustrative of major themes from the comments. The 
second appendix (Appendix 2) is a comprehensive index of examples for 
use with the 2019 Patent Eligibility Guidance, including examples 
issued prior to the publication of the 2019 Patent Eligibility 
Guidance. The third appendix (Appendix 3) lists and discusses selected 
eligibility cases from the Supreme Court and the U.S. Court of Appeals 
for the Federal Circuit.
    The October 2019 Patent Eligibility Guidance Update, including the 
appendices, is available to the public on the USPTO's website (https://www.uspto.gov/PatentEligibility). Feedback on the October 2019 Patent 
Eligibility Guidance Update or on any patent eligibility issue is 
welcome on an ongoing basis. Instructions for submitting feedback are 
provided in the Addresses section of this notice.

    Dated: October 11, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-22782 Filed 10-17-19; 8:45 am]
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