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

December 16, 2014
Marshall Gerstein Alert

On December 16, 2014, the U.S. Patent and Trademark Office (PTO) published “2014 Interim Guidance on Patent Subject Matter Eligibility” outlining the PTO's current framework for evaluating patent-eligibility of inventions under 35 USC §101.

Although the Interim Guidance carries no force of law, U.S. patent examiners follow that guidance when evaluating the patent-eligibility of patent applications. The PTO has simultaneously published, on its website, "nature-based product examples" "to illustrate the analysis set forth in the Interim Eligibility Guidance." Whereas the Interim Guidance is doctrine-focused, the examples are technology-focused, addressing inventions such as gunpowder and fireworks; food and beverage compositions; therapeutic compounds isolated from nature; proteins, nucleic acids, and antibodies; and genetically modified organisms. Because of the focus on "natural" principles, phenomena, and products, patent applications in the biotechnology, chemical, and pharmaceutical fields are those likely to be most heavily impacted. Notably absent are examples governing diagnostic products and methods.

The PTO promises that "Abstract Idea Examples" are "COMING SOON." Until then, the Interim Guidance will still be of interest to the high tech community for the PTO's discussion of recent court decisions and computer-implemented methods for image rendering, gaming, online commercial transactions, displaying advertisements with copyrighted content, and combining a host webpage with web content from a merchant.

The newest Interim Guidance represents at least the third attempt in 2014 and at least the eighth attempt since 2009 by the PTO to articulate the types of inventions that its Patent Examining Corps should deem patent-eligible, following related efforts in June 2014, March 2014, June 2013, July 2012, July 2010, January 2010, and August 2009. The December 2014 Interim Guidance "supplements" the PTO's June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International (2014) and "supersedes" the March 4, 2014, Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products (March 2014 Procedure) issued in view of the Supreme Court decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. (2013) and Mayo Collaborative Services v. Prometheus Laboratories Inc. (2012). The PTO is accepting written comments on the Interim Guidance for 90 days and will discuss them at a public forum on January 21, 2015. Public comments were influential in the PTO's decision to replace its controversial March 2014 guidelines.

Section 101 of the patent statute has not changed since 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." However, the Supreme Court has created and/or altered "judicial exceptions" to Congress's broad categories of patent-eligible subject matter, in decisions such as Alice, Myriad, Prometheus, and Bilski v. Kappos (2010), necessitating repeated reinterpretation and reevaluation by the PTO. The Interim Guidance provides the PTO's current interpretations of these and other Supreme Court and Federal Circuit decisions.

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

The information contained in this alert is for informational purposes only and is not legal advice or a substitute for obtaining legal advice. Under applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2014 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.

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