USPTO seeks public comment regarding subject-matter eligibility

On October 17 2016 the US Patent and Trademark Office (USPTO) announced that two roundtables will be held in the coming months to discuss patentable subject matter eligibility under 35 USC § 101. The roundtables have been set up to facilitate public comment and discussion regarding the USPTO’s current guidance on subject-matter eligibility as well as case law arising from interpretation of the requirements under 35 USC § 101.

Roundtable 1: USPTO Subject-Matter Eligibility Guidelines
Roundtable 1 will be held on November 14 2016 from 1:00pm to 5:00pm (EST) at the USPTO in Alexandria, Virginia. It will also be available simultaneously via webcast for those who cannot attend in person.

During this first roundtable event, the USPTO will seek input and feedback from the public to improve its existing subject-matter eligibility guidance and training examples. In particular, the USPTO will seek comments:

• suggestions on how to improve the USPTO’s subject-matter eligibility guidance;
• comments on the May 2016 life sciences examples and their effect on prosecution of life sciences patent applications, as well as suggestions for additional life sciences examples;
• suggestions on how to best make examiners aware of newly issued judicial decisions and how to incorporate recent decisions into the subject-matter eligibility guidance; and
• any concerns regarding application of court decisions by examiners or the USPTO’s guidance and training examples.

The USPTO also encourages the public to email written comments on its subject-matter eligibility guidance and training examples to [email protected]. Information, registration instructions for those interested in speaking and the discussion agenda (once available) for Roundtable 1 are available on the USPTO website.

Roundtable 2: Exploring the Legal Contours of Patent Subject-Matter Eligibility
Roundtable 2 will be held on December 5 2016 from 8:00am to 5:00pm (PST) at Paul Brest Hall, Stanford University, Stanford, California. It will also be available simultaneously via webcast for those who cannot attend in person.

During the second roundtable, the USPTO will seek to promote conversation on how the existing Section 101 jurisprudence is evolving in view of recent decisions rendered by the Supreme Court and the Federal Circuit. The USPTO is further interested in creating a public record on the actual or perceived impact of existing case law on particular technology areas, as well as the effects on investment in research and development and innovation. The USPTO will also seek comments on whether patent eligibility law should be left primarily to the courts and whether other administrative initiatives and/or legislative changes are recommended.

To facilitate the Roundtable 2 conversation, in its notice the USPTO listed several questions on which it is interested in receiving comments and feedback:

• Question 1 – impact of judicial interpretation of Section 101;
• Question 2 – statutory categories of patentable subject matter;
• Questions 3-7 – exceptions to patentable subject matter;
• Questions 8-13 – patentable subject matter in the life sciences;
• Questions 14-15 – process patents and the machine or transformation test;
• Question 16 – patentability of business methods; and
• Questions 17-18 – patentability of software/computer-related inventions.

The USPTO also encourages the public to email written comments to [email protected]. Information, registration instructions for those interested in speaking and the discussion agenda (once available) for Roundtable 2 are available on the USPTO website.