On March 4th, 2014, the United States Patent and Trademark
Office issued a guidance advising examiners and the public of the
factors for determining whether an invention satisfies the
provisions of 35 U.S.C. §101, as
applied to patent eligibility in view of the U.S. Supreme
Court's decisions in Molecular Pathology v. Myriad Genetics,
Inc. (Myriad) and Mayo Collaborative Services v. Prometheus
Laboratories, Inc. (Prometheus).
In this issue, we summarize and highlight key "take home"
points of the guide. Next month, we will discuss the guide's
potential implications for inventors and legal service
providers.
The guide issued by the USPTO, Guidance for Determining Subject Matter
Eligibility of Claims Reciting or Involving Laws of Nature, Natural
Phenomena, & Natural Products
(Guidance), contains four sections. The first section
summarizes the overall process to be followed by examiners when
assessing subject matter eligibility under 35 U.S.C. §101. The
second section provides guidance on how to determine if a claim as
a whole recites eligible subject matter and is "significantly
different" from any of four judicial exemptions recited in the
first section. The third section provides several example claims
and analyses of their eligibility in view of the points raised in
the first two sections. Finally, the fourth section provides
examiners with language to be used when making a rejection in
accordance with the Guidance.
Click here to read the full discussion on
the impact that the Supreme Court's decisions may have on
subject matter eligibility analysis.
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.