By Bernard P. Codd of McDermott Will & Emery
On March 4, 2014, the U.S. Patent and Trademark Office (USPTO) released examination guidelines titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (the Guidelines). The USPTO issued the guidelines in view of the recent U.S. Supreme Court decisions Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___ (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012).
The USPTO summarized the guidelines in a three question flowchart (found at http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf). The three questions include (1) whether the claim is directed to one of the four statutory categories, i.e., a process, machine, manufacture or composition; (2) does the claim recite or involve judicial exceptions (e.g., laws of nature/natural principles, natural phenomena and natural products); and (3) does the claim as a whole recite something significantly different than the judicial exceptions?
The guidelines listed 12 non-exclusive factors (six factors suggesting eligibility and six factors suggesting non-eligibility) to be considered when answering the third question. The weighing and consideration of the 12 factors should be conducted in ...