USPTO Seeks Comments on Eligible Subject Matter Guidelines

On December 20, 2005, the United States Patent and Trademark Office (USPTO) requested comments from the public regarding its interim examination guidelines in used by USPTO personnel to determine whether the claims in a patent application are directed to patent eligible subject matter. Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov. To be ensured of consideration, written comments must be received on or before June 30, 2006. No public hearing will be held.

According to the notice, the USPTO is particularly interested in comments addressing the following questions:

1. Is the distinction between physical transformation and data transformation appropriate in the context of the Patent Subject Matter Eligibility Interim Guidelines? If not, please explain why and provide support for an alternative analysis.
   While the Patent Subject Matter Eligibility Interim Guidelines explain that physical transformation of an article or physical object to a different state or thing to another establishes that a claimed invention is eligible for patent protection, Annex III to the Patent Subject Matter Eligibility Interim Guidelines explains that identifying that
   a claim transforms data from one value to another is not by itself sufficient for
   establishing that the claim is eligible for patent protection. Therefore, claims that
   perform data transformation must still be examined for whether there is a practical application of an abstract idea that produces a useful, concrete, and tangible result.
2. Is the USPTO interpretation of State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), as holding that if there is no
   physical transformation, a claimed invention must necessarily, either expressly or inherently, produce a useful, concrete, and tangible result (rather than just be ‘‘capable of’’
   producing such a result) either too broad or too narrow? If so, please suggest an alternative interpretation and reasons therefor.
3. As the courts have yet to define the terms ‘‘useful,’’ ‘‘concrete,’’ and ‘‘tangible’’ in the context of the practical application requirement, are the explanations provided in the Patent Subject Matter Eligibility Interim Guidelines sufficient? If not, please suggest alternative explanations.
4. What role should preemption have in the determination of whether a claimed invention is directed to a practical application of a 35 U.S.C. 101 judicial exception?
5. Annex IV to the Patent Subject Matter Eligibility Interim Guidelines explains why the USPTO considers claims to signals per se, whether functional descriptive material or nonfunctional descriptive material, to be nonstatutory subject matter. Does the
   USPTO analysis represent a reasonable extrapolation of relevant case law? If
   not, please explain why and provide support for an alternative analysis. If
   claims directed to a signal per se are determined to be statutory subject
   matter, what is the potential impact on internet service providers, satellites,
   wireless fidelity (WiFi), and other carriers of signals?

The USPTO also notes that the U.S. Supreme Court has granted certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., S.Ct. No. 04–607 (LabCorp). See 546 U.S. ll (Nov. 2, 2005). The USPTO expects that a decision in LabCorp will be rendered sometime before the end of June 2006. Since the Court’s decision in LabCorp may impact the broader question of patent subject matter eligibility under 35 U.S.C. 101, the USPTO is extending
the period for public comment on the USPTO’s Patent Subject Matter Eligibility Interim Guidelines until June 30, 2006. The USPTO will 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.