What Inventions are Eligible for Patenting? US PTO Issues New Guidelines for Examiners

March 6, 2014

On March 4, 2014, the U.S. Patent and Trademark Office (PTO) issued a memorandum to its patent examiners outlining patent eligibility under 35 USC §101. The 2014 memorandum is at least the sixth attempt in five years by the PTO to articulate the types of inventions that its Patent Examining Corps may consider as eligible for a patent, following related efforts in June 2013, July 2012, July 2010, January 2010, and August 2009. Only the 2013 memo is explicitly superseded by the newest memo.

Section 101 of the patent statute has not changed since it was enacted by Congress in 1952, broadly stating, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” The Supreme Court, however, has created and/or altered “judicial exceptions” to Congress’s broad categories of patent-eligible subject matter, in decisions such as Bilski v. Kappos (2010)Mayo v. Prometheus (2012), and Association for Molecular Pathology v. Myriad Genetics (2013), necessitating repeated reinterpretation and reevaluation by the PTO.

The 2014 memorandum attempts to interpret the Court’s Mayo, Myriad, and Diamond v. Chakrabarty (1980) decisions, which collectively pertain to biotechnology processes and biochemical compositions. The 2014 memorandum emphasizes that its guidance pertains to “all claims (i.e., machine, composition, manufacture and process claims) reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.”

The memorandum instructs, "The determination of eligibility is not a single, simple determination, but is a conclusion reached by weighing the relevant factors, keeping in mind that the weight accorded each factor will vary based upon the facts of the application." The memorandum lists at least twelve factors to weigh when considering whether a claimed invention is “significantly different” than the Supreme Court’s “judicial exceptions.” Because of the focus on “natural” principles, phenomena, and products, patent applications in the biotechnology and chemical fields are those likely to be most heavily affected.

The 2014 memorandum, like its predecessors, was not subject to public notice or comment. This likely will not be the last PTO memorandum on the topic of patent eligibility, as the Supreme Court is expected to issue yet another decision by late June in Alice Corp. v. CLS Bank, involving §101 and computer-implemented inventions.

To learn more about what types of inventions are patent-eligible, contact the author or another attorney at Marshall, Gerstein & Borun.

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