Tag Archives: Examination Guidelines

Update On Mayo Myriad Patent Eligibility From USPTO BCP Partnership Meeting

On September 17, 2014, the USPTO held the first “bicoastal” Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting, with live participation from the USPTO’s main campus in Alexandria, VA and from San Jose University in San Jose, CA. The last item on the agenda was a panel on the Mayo-Myriad Guidance, so I joined the meeting by WebEx to hear … Continue reading this entry

USPTO Asks For Patent Subject Matter Eligibility Comments By July 31, 2014

In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014  on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International and on the USPTO’s March 4, 2014 “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural … Continue reading this entry

Update On Myriad Appeal And Announcing A Public Forum On The USPTO 101 Guidelines

Myriad has appealed the district court decision that denied its motion for a preliminary injunction against Ambry Genetics Corp. According to a report in Bloomberg BNA Life Sciences Law & Industry Report™, on April 14 , 2014, the Federal Circuit denied Myriad’s motion to expedite proceedings, but it is still possible that this Myriad appeal will … Continue reading this entry

Do The USPTO 101 Guidelines Violate International Trade Agreements?

One advantage of being a blogger in the relatively small world of patents is that I have gotten to know practitioners in other countries who also have a keen interest in patent law. One such person is Australian Registered Patent Attorney Mark Summerfield, who blogs at Patentology. I enjoyed his article on the new USPTO … Continue reading this entry

The State Of Vaccines Under The USPTO 101 Guidelines

In his State of the Union Address given on January 28, 2014, President Obama recognized the need for continued and increased investment in new technologies, including technologies specific to the biological and pharmaceutical fields. (Original Official White House Photo by Pete Souza, licensed under Creative Commons Attribution License 3.0) How would “vaccines that stay ahead of drug-resistant … Continue reading this entry

A First Look At The USPTO 101 Training Slides

The USPTO has set up a new web page with resources for examining claims for patent subject matter eligibility, including a link to the slides used in training programs for Examiners in Technology Centers 1600 and 1700. While the slides hew closely to the Guidelines, they include additional commentary and examples that illustrate how the … Continue reading this entry

Five Things You Should Know About The USPTO Patent Subject Matter Eligibility Guidelines

The new USPTO patent subject matter eligibility guidelines set forth a detailed analytical framework for evaluating whether claims satisfy the patent subject matter eligibility requirement of 35 USC § 101. If you are an examiner, patent agent, patent attorney, or applicant overseeing patent portfolios in chemical, biotechnology, or life sciences technologies, you should read and study … Continue reading this entry

Do Pharmaceutical Compositions Have Patent Subject Matter Eligibility Under The New USPTO Guidelines?

The USPTO’s new patent subject matter eligibility guidelines  (the “Guidelines”) include examples that apply the multi-factored analysis mandated by the Guidelines to compositions that include one or more “natural products” as a component. Do these examples indicate that pharmaceutical compositions with an active ingredient that can be obtained from a natural source no longer can be … Continue reading this entry

USPTO Issues New Patent Subject Matter Eligibility Guidelines

The USPTO has issued new patent subject matter eligibility guidelines to aid examiners in applying the principles of Myriad and Prometheus to any claim “reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.” The guidelines include a general framework for analyzing such claims for patent subject matter eligibility and examples applying the … Continue reading this entry

USPTO Issues Prometheus Examination Guidelines

On July 3, 2012, the USPTO issued its 2012 Interim Procedure for Subject Matter Eligibility Analysis 0f Process Claims Involving Laws of Nature.  According to the introduction, the guidelines are “for use by USPTO personnel in determining subject matter eligibility of process claims involving laws of nature under 35 USC § 101,”  in view of … Continue reading this entry

The USPTO Examines Prometheus

The day after the Supreme Court issued its unanimous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the USPTO issued a letter to the Patent Examining Corps that provides preliminary guidance to examiners and promises that more detailed guidance is forthcoming.… Continue reading this entry

USPTO Releases Examination Guidelines On "Definiteness"

On February 9, 2011, the USPTO issued “Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112” and “Supplemental Information for Examining Computer-Implemented Functional Claim Limitations.” The Guidelines have immediate effect, but the USPTO will consider written comments received by April 11, 2011. 35 USC § 112, Second Paragraph The Guidelines relate primarily to the “definiteness” … Continue reading this entry

Pharma Cases Dominate New USPTO Obviousness Examination Guidelines

On September 1, 2010 the USPTO issued an update to the Obviousness Examination Guidelines that were promulgated after the Supreme Court’s 2007 KSR decision. The new Guidelines are intended to supplement, not replace, the 2007 Guidelines, and extract teaching points from Federal Circuit decisions addressing obviousness in the wake of KSR. I was surprised by … Continue reading this entry

What Should Bilski Mean To Examiners?

Shortly after the Supreme Court issued its decision, the USPTO published “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos.” The guidance is to be used by examiners when evaluating process claims for patent-eligibility under 35 USC § 101. The Interim Guidance was effective as of its July 27, 2010 publication … Continue reading this entry