On July 14, 2016, the USPTO issued a Memorandum to the Patent Examining Corps on patent eligibility in view of recent court decisions. The July 2016 Memorandum extracts more guidance for assessing patent eligibility from the Federal Circuit decision in CellzDirect, and notes that the Supreme decision denying certiorari in Sequenom “does not elevate” the significance of the panel decision in that case.
USPTO Patent Eligibility Guidance In View Of CellzDirect
As I noted in this article on CellzDirect, the Federal Circuit’s analysis in that case focused on Step 2A of the USPTO’s analytical framework for assessing patent eligibility–whether a claim is directed to law of nature. The July 2016 Memorandum highlights this aspect of the court’s decision. For example, the July 2016 Memorandum notes:
[T]he court emphasized that the “directed to” analysis of a process claim requires more than “merely identify[ing] a patent-ineligible concept underlying the claim” and instead requires an analysis of whether “the end result of the process, the essence of the whole,was a patent-ineligible concept.”
The July 2016 Memorandum explains that the claims at issue were determined to satisfy 35 USC § 101 because they “were focused on a process for achieving [a] desired outcome,” i.e., obtaining a preparation of multi-cryopreserved viable hepatocytes.
“[L]ike thousands of other claims that recite methods of producing things or methods of treating disease, [the claims] were not directed to a judicial exception.”
The July 2016 Memordum also notes that the Federal Circuit distinguished the CellzDirect claims from the claims in Mayo and Sequenom “that were found to be directed to a patent-ineligible concept when they ‘amounted to nothing more than observing or identifying the ineligible concept itself.'”
No Change To Existing Patent Eligibility Guidance
The July 2016 Memorandum concludes that “the USPTO’s current subject matter eligibility guidance and training examples are consistent with the Federal Circuit’s panel decisions” in these two cases, and notes that “[l]ife sciences method claims should continue to be treated in accordance with the USPTO’s subject matter eligibility guidance (most recently updated in May of 2016).”
This article reviews the May 2016 guidance on the patent eligibility of diagnostic methods.
This article reviews the May 2016 guidance on the patent eligibility of natural products.
This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney.
This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary.
The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites.
In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.