USPTO issues new examination guidelines for determining patent-eligible inventions

July 6, 2012

On July 3, 2012, the United States Patent and Trademark Office (USPTO) issued “2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature” in the form of a memo addressed to patent examiners. These guidelines represent a second, expanded attempt by PTO policy makers to assist examiners with the interpretation of the recent Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (March 20, 2012), in which an invention directed to a method of optimizing the therapeutic efficacy of a drug treatment was deemed ineligible for patent protection, because, as claimed, it was an inappropriate attempt to patent a “law of nature.” Although the examination guidelines apply to all technologies “in which a law of nature, a natural phenomenon, or naturally occurring relation or correlation is a limitation,” the memo explicitly states, “It is expected that the claims impacted by this guidance will predominantly be those examined in Technology Center 1600.” Thus, biotechnology, chemical, and pharmaceutical inventions are likely to be most impacted by these new examination guidelines. For more information about the guidelines or how they may impact your patent strategy or patent portfolio, contact an attorney from our Biotechnology or Chemical practice groups.

This alert is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel. Readers should not act upon the information presented without consulting professional legal counsel. Pursuant to applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2012 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.


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