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USPTO Scheduled to Host Two Roundtables on Patent Subject Matter Eligibility

Source: Grill IP patent news

uspto-alexandria-roundtables-subject-matterLast month, the U.S. Patent and Trademark Office (USPTO) announced that it will hold two roundtables for public input on patent subject matter eligibility. The first roundtable will take place on November 14th from 1:00 to 5:00PM EST in the Madison Auditorium in Alexandria, Virginia. The second will be on December 5th from 8:00AM to 5:00PM PST in Stanford University’s Paul Brest Hall. The USPTO’s Federal Registrar notice announcing the events has additionally requested written comments on the topics to be addressed at each roundtable.

These consultations come in the wake of several decisions by the Federal Circuit and Supreme Court. The USPTO’s notice states, “over the past six years, the Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law and continue to generate substantial public debate.” The notice continues, “[These cases] have overturned decades-old USPTO practice regarding patent eligibility of isolated genes, placing the United States at odds with the practices of major trading partners, including Europe. On the other hand, the Mayo two-step test has generally raised the bar for patent eligibility in all fields of technology.”

The first roundtable will look at how to improve existing subject matter eligibility guidance and training examples. Specifically, the USPTO is calling for feedback in three additional areas:

  1. Comments on the May 2016 Life Sciences examples and their effect on prosecution of patent applications in the life sciences, and suggestions of additional examples, or technology areas in which examples would be helpful;
  2. Suggestions on how best to make examiners aware of newly issued judicial decisions, and how best to incorporate recent decisions holding claims eligible, such as Enfish, Bascom, Rapid Litigation Management, and McRO, into the Office’s subject matter eligibility guidance; and
  3. Concerns on how the Office’s subject matter eligibility guidance and training examples, or how court decisions, are being applied by examiners.

While the deadline to submit a request to speak at this roundtable has passed, those interested may still speak by appearing in person at the USPTO’s main Alexandria location, or at one of the four USPTO Regional Offices. Comments on these topics may be submitted by email to

The second roundtable will concern larger questions on the delineation of eligible subject matter according to the U.S. patent system. At the Stanford event, the Office hopes to:

  1. “promote conversation on how the current section 101 jurisprudence is evolving;  what the optimum legal contours for patent eligibility should be; and how best to achieve these goals”
  2. “facilitate discussion and create a public record with relevant information on the actual or perceived impact of existing law on particular technology areas, and the effects on investment in research and development, and innovation generally”
  3. obtain “comments on whether developments in patent-eligibility law should be left primarily to the courts or whether other administrative initiatives are desirable”
  4. secure input on “whether legislative changes are desirable and, if so, views on the elements of such changes.”

The notice also contains eighteen questions for the public to consider and comment on prior to the second roundtable, ranging from: “Should the patent statute be amended to define the judicial exceptions?” to “If you support some form of ‘machine or transformation test,’ please identify the best expression of such a test.”

    To speak at the second roundtable, a request must be submitted to the Office by November 14th. Written comments for the second roundtable should be emailed to

Comments regarding either roundtable must be sent in by January 18th, and both will be available for viewing via webcast.

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Author: grill-ip

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