USPTO Issues Guidance to Patent Examiner in Wake of Prometheus Decision

The U.S. Patent and Trademark Office issued a memorandum to its patent examiners regarding the Supreme Court’s recent decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The memorandum provides preliminary guidance to the Patent Examining Corps. in light of the Court’s decision, and also indicates that further guidance will be forthcoming.

The first part of the USPTO memo provides a short summary of the High Court’s decision. It reads:

In this case, the claims inform a relevant audience about certain laws of nature.  Any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community.  Those steps, when viewed as a whole, add nothing significant beyond the sum of  their parts taken separately.  The Court has made clear that to transform an unpatentable law of  nature into a patent-eligible application of  such a law, one must do more than simply state the law of  nature while adding the words “apply it.”  Essentially, appending conventional steps, specified at a high level of  generality, to laws of  nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible.”

The second part offers specific guidance to patent examiners. It specifically states that examiners should continue to examine patent applications for  compliance with section 101 using the existing Interim Bilski Guidance issued July 27, 2010. However, it does acknowledge that certain additional considerations are now in order.

The USPTO states:

Examiners must continue to ensure that claims, particularly process claims, are not directed to an exception to eligibility such that the claim amounts to a monopoly on the law of nature, natural phenomenon, or abstract idea itself.  In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.

The agency concludes, “The USPTO is continuing to study the decision in Mayo  and the body of  case law that has evolved since Bilski and is developing further detailed guidance on patent subject matter eligibility under 35 U.S.C. § 101.”

Stay tuned for further guidance from the USPTO.


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