The United States Patent and Trademark Office (USPTO) has now
released its revised and much anticipated guidelines on subject
matter eligibility ("Interim Eligibility Guidance"). The
guidelines are effective as of today, December 16, 2014, and
supplement the June 25, 2014, Preliminary Examination Instructions
in view of the Supreme Court decision in Alice Corp. (June
2014 Preliminary Instructions) and
supersede the March 4, 2014, Procedure
For Subject Matter Eligibility Analysis Of Claims Reciting Or
Involving Laws Of Nature/Natural Principles, Natural Phenomena,
And/Or Natural Products (March 2014 Procedure).
The Interim Eligibility Guidance
recites the two-step analysis for patent matter subject matter
eligibility ("Mayo test") which was applied in
Alice and explicitly states that "all claims (product
and process) with a judicial exception (any type) are subject to
the same analysis". Further and importantly, nature based
products are assessed not only for markedly different structural
characteristics – the "analysis compares the nature-
based product in the claim to its naturally occurring counterpart
to identify markedly different characteristics based on
structure, function and/ or
Also included was a "Nature
Based Products" example document that reanalyzes and replaces
the previous examples in the March 2014 Procedure. Many of the
controversial example eligibilities have been revised. Stay tuned
for further commentary on the examples which will be posted in the
The USPTO is again seeking public
comment on the Interim Eligibility Guidance as well as additional
examples and is accepting submission until March 16, 2015. Whether
there will be further changes remain to be seen.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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