Federal Register: September 17, 2009 (Volume 74, Number 179)
DOCID: fr17se09-22 FR Doc E9-22420
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Docket ID: [Docket No. PTO-P-2009-0037]
NOTICE: NOTICES
DOCID: fr17se09-22
DOCUMENT ACTION: Request for comments.
SUBJECT CATEGORY:
Request for Comments on Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility
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.
DOCUMENT 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.
SUMMARY:
Request for Comments on Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility
SUPPLEMENTAL 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, 133637, 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. E922420 Filed 91609; 8:45 am]
BILLING CODE 351016P
FOR FURTHER INFORMATION CONTACT
Caroline D. Dennison, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at 571 2727729, or by facsimile transmission to 5712730125, marked to the attention of Caroline D. Dennison.