Earlier, the USPTO issued interim examination instructions for
evaluating patent subject matter eligibility under 35 U.S.C.
101 (Interim Patent Subject Matter Eligibility Examination
Instructions) pending the Bilski decision. According to the
USPTO, the Interim Patent Subject Matter Eligibility
Examination Instructions will 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.
Last Thursday, the USPTO requested comments from the public
regarding the Interim Patent Subject Matter Eligibility
Examination Instructions. Written comments must be received on
or before September 28,
2009. No public hearing will be held.
In case you're wondering why the USPTO has provided a scant
11-day lead time for comments,
[T]he Interim Patent Subject Matter Eligibility Examination Instructions relate only to interpretative rules, general statements of policy, or rules of agency organization, procedure, 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, 1336–37, (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.’ ’’)Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov.
Comments may also be submitted by facsimile to (571) 273–0125, marked to the attention of Caroline D. Dennison.
Although comments may be submitted by mail or facsimile, the USPTO prefers to receive comments via the Internet.
