USPTO Seeks Public Feedback and Ideas at Subject Matter Eligibility Roundtables

The USPTO announced today that it will be hosting two roundtable events, one in November and one in December, regarding subject matter eligibility under 35 U.S.C. § 101. The roundtables are designed to facilitate public discussion of the USPTO’s current guidance on subject matter eligibility and topics related to current subject matter eligibility jurisprudence.

Roundtable 1: USPTO Subject Matter Eligibility Guidelines

For the first roundtable event, the USPTO requests public input for improving its subject matter eligibility guidance and training examples. In particular, the USPTO is seeking views and comments on the following topics:

• Suggestions on how to improve the USPTO’s subject matter eligibility guidance
• Comments on the May 2016 Life Sciences examples and suggestions for additional examples
• Suggestions on how to make examiners aware of recent judicial decisions and how to incorporate such decisions into subject matter eligibility guidance
• Concerns regarding how examiners are applying court decisions or the USPTO’s guidance and training

Roundtable 1 will be held on November 14, 2016, from 1 pm to 5 pm (Eastern Standard Time) at the USPTO Headquarters in Alexandria, VA, and will be available via webcast. The public is encouraged to email written comments to 2014_interim_guidance@uspto.gov. Information about Roundtable 1, including registration instructions for those who wish to speak at the event and the discussion agenda (once available) can be found on the USPTO website.

Roundtable 2: Exploring the Legal Contours of Patent Subject Matter Eligibility

The focus of the second roundtable discussion will be the public’s views regarding subject matter eligibility in light of recent decisions by the Supreme Court and the Federal Circuit. The USPTO is also interested in the actual and perceived impact of these decisions on particular technology areas, as well as effects on research, development, and innovation, generally. Additionally, the USPTO aims to promote conversation regarding whether patent-eligibility law should be left primarily to the courts or whether legislative changes or other administrative initiatives are desirable. To facilitate the conversation, the USPTO provided several questions in the notice falling under the following categories:

• Impact of Judicial Interpretation of Section 101
• Statutory Categories of Patentable Subject Matter
• Exceptions to Patentable Subject Matter
• Patentable Subject Matter in the Life Sciences
• Process Patents and the Machine or Transformation Test
• Patentability of Business Methods
• Patentability of Software/Computer-Related Inventions

Roundtable 2 will be held on December 5, 2016, from 8 am to 5 pm (Pacific Standard Time) at Stanford University, Stanford, CA, and will be available via webcast. The public is encouraged to email written comments to 101Roundtable2@uspto.gov. Information about Roundtable 2, including registration instructions for those who wish to speak at the event and the discussion agenda (once available), can be found on the USPTO website.