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; extension of comment period.

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 published a notice requesting comments from the public regarding these interim examination guidelines. The USPTO is extending the period for comment on these interim examination guidelines.

Comment Deadline Date: To be ensured of consideration, written comments must be received on or before July 31, 2006. No public hearing will be held.

ADDRESSES:

Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov. 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.

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 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 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 USPTO published a notice on December 20, 2005 requesting public comment on the interim guidelines. See Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 70 FR 75451 (Dec. 20, 2005) (Request for Comments).

A case currently awaiting decision by the U.S. Supreme Court, Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., S.Ct. No. 04-607 (LabCorp), may impact the question of patent subject matter eligibility under 35 U.S.C. 101. The December 2005 Request for Comments indicated that the USPTO expected that a decision in LabCorp would be rendered sometime before the end of June 2006, and that USPTO would 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. See Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 70 FR at 75452. Therefore, the USPTO is further extending the period for public comment on the USPTO's Patent Subject Matter Eligibility Interim Guidelines until July 31, 2006 to permit the comments to take into account the Court's decision in LabCorp (still expected before the end of June 2006).