Partner David Gass Offers Critique of USPTO’s New Examiner Training Memo

March 10, 2014

In "10 Problems in the USPTO’s New Training Memo," published in Law360 on March 10, 2014, David A. Gass critiques the U.S. Patent and Trademark Office’s March 4, 2014, memorandum to patent examiners, which outlines the procedure that all patent examiners are instructed to follow when evaluating patent eligibility under 35 USC Section 101. The PTO memorandum attempts to interpret the Supreme Court’s Mayo, Myriad and Diamond v. Chakrabarty decisions pertaining to patent-eligibility of biotechnology processes and biochemical compositions. The memorandum was not subject to public notice or comment, but is already being used to train patent examiners. In his analysis, Mr. Gass highlights possible flaws in the memorandum as written, and urges a public comment period and reissuance of an improved memorandum by the PTO, to reduce instances of flawed examination of patent applications, particularly in the biotechnology and chemical fields.

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