On May 9, 2014, the USPTO hosted a forum to receive public feedback on the patent subject matter eligibility guidance for examiners circulated on March 4, 2014. The USPTO heard formal presentations from ten speakers (including myself) and comments from audience members. Most speakers suggested alternative approaches to applying the Supreme Court's "product of nature" and "law of nature" jurisprudence, and emphasized the dire consequence that the guidance could have on investment and innovation in the chemical, biotechnology and pharmaceutical industries.
While I expect the guidance to be modified eventually, one of my concerns is what to do in the meantime. Here are five points I came away with on that issue:
- The USPTO is not likely to withdraw the guidance.
- The USPTO is open to reconsidering, revising, and supplementing the guidance.
- The USPTO would like to receive written public comments on the guidance "by the end of June."
- The USPTO urges the public to suggest alternative analytical frameworks, additional or alternative factors to be considered, and additional examples of eligible and ineligible claims.
- The USPTO advises applicants to respond to new § 101 rejections as they would to any other rejection, using the framework outlined in the guidance, and appealing rejections that are believed to be contrary to law.
I encourage all practitioners and stakeholders to review the USPTO guidance and provide thoughtful feedback to the USTPO as soon as possible. (You can find the USPTO patent eligibility guidelines, related information, and instructions for submitting comments on the USPTO's Myriad-Mayo Guidance webpage.)
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