USPTO Issues New Subject Matter Eligibility Examination Guidelines for Claims Involving Laws of Nature, Natural Principles, Natural Phenomena, and/or Natural Products
- Judith U. Kim, Paul A. Calvo, Ph.D., Miklos Gaszner, Ph.D.
- Sterne, Kessler, Goldstein & Fox
On March 4, 2014, the USPTO issued a Guidance memorandum for examination of subject matter eligibility under 35 U.S.C. § 101 in view of AMP v. Myriad (2013)and Mayo v. Prometheus (2012). Under the new guidelines, the examiner will first determine whether the claim recites or involves one or more of laws of nature/natural principles, natural phenomena, and natural products, i.e., judicial exceptions. If it does not, the claim is patent eligible, provided it is directed to one of the four statutory patent-eligible subject matter categories. If it does, the examiner will weigh multiple factors to determine whether the claim as a whole recites something significantly different than the judicial exception(s) and thus is patent eligible.
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