Patent Subject Matter Eligibility: Navigating the New USPTO Guidance

Description

On Dec. 16, 2014, the USPTO published its Interim Eligibility Guidance (“Interim Guidance”) intended "for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101." The Interim Guidance is significantly changed from its predecessor guidance, and gives practitioners insight into the eligibility evaluation process.

This guidance comes on the heels of the USPTO's March 2014 subject matter eligibility guidelines, nicknamed the "Myriad/Mayo Guidelines." The March guidelines introduced a new standard for practitioners, one of a "marked difference" or "significant difference" from a natural material, law or phenomenon.

The new Interim Guidance and accompanying examples differ in many important ways from those issued in March. Knowledge of these differences and the current USPTO viewpoint on section 101 is critical in litigation, prosecution, licensing, and evaluation of patent portfolios of inventions involving a natural material, law or phenomenon. Whether the guidance will withstand judicial review remains to be seen, but practitioners need to know how examiners will treat claims falling under these guidelines.

Listen as our authoritative panel of patent attorneys discusses the March and December guidance, flowchart and examples. The panel will offer strategic considerations for avoiding a section 101 rejection.