Biotech Patents and Section 101 Rejections: Meeting Patent Eligibility Requirements

Description

The number of Section 101 rejections over all types of technologies, including biotechnology, has dramatically increased since the Supreme Court's decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc. (U.S. 2012) and Alice Corp. v. CLS Bank (U.S. 2014).

A review of USPTO guidance documents and art unit-specific responses to Section 101 can help practitioners craft a strategy for overcoming subject matter eligibility rejections. The guidance documents attempt to summarize the specific facts and holdings of exemplary 101 cases and suggest analogous fact patterns presented in prosecution to identify eligible and ineligible claims. Case law has not clearly illuminated the line between eligible and ineligible subject matter. Still, it does provide helpful guidance regarding claim types to avoid because they have been found ineligible by the courts.

The panel will discuss these cases and their counterpoints, suggesting potential strategies for eligible patent protection under Section 101.

Section 101 rejections and appeals continue to mount in numbers as examiners and PTAB judges attempt to reconcile inconsistent case law. Applicants should anticipate Section 101 rejections and devise strategies to prevent or mitigate these rejections. Anticipating and properly planning for eligibility rejections can lead to success in avoiding or overcoming these rejections.

Listen as our authoritative panel of patent attorneys discusses the impact of the Mayo and Alice decisions and the USPTO's guidance on Section 101 rejections. The panel will offer best practices for patent counsel to avoid or overcome Section 101 rejections for biotech patents.