Patent Office Issues New Internal Guidance on Subject Matter Eligibility

On March 4, 2014, the Patent Office published a guidance memorandum titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (Guidance). The Guidance implements a new procedure to address changes in the law relating to subject matter eligibility under 35 U.S.C. § 101 in view of recent court decisions including Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012).

Examiners are being trained – and indeed some have completed training – with regard to these new guiding rules. You can expect some bumps and disagreements as practitioners and examiners debate the role of the Guidance and how it shapes examination of particular claims, but continued efforts towards clarity in patent examination are always appreciated.

You can view the new Guidance document here.

You can view a Quick Reference Sheet here.

You can view Training Slides used to train the patent examiners here.