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USPTO to Host Forum to Solicit Feedback on Guidance for Determining Subject Matter Eligibility of Claims Involving Laws of Nature, Natural Phenomena, and Natural Products


Written by United States Patent and Trademark Office
Posted: April 16, 2014 @ 2:33 pm
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Washington– The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will host a public forum on May 9, 2014 at the USPTO headquarters in Alexandria, Virginia, to solicit feedback from organizations and individuals on its recent guidance memorandum for determining subject matter eligibility of claims reciting or involving laws of nature, natural phenomena, and natural products (Laws of Nature/Natural Products Guidance). The Laws of Nature/Natural Products Guidance implemented a new procedure to address changes in the law relating to subject matter eligibility in view of recent Supreme Court precedent.

“We are always interested in receiving feedback from the public and this forum will provide an opportunity for participants to present their interpretation of the impact of Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analyses during patent examination.” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee.

On March 4, 2014, USPTO issued the Laws of Nature/Natural Products Guidance for use in subject matter eligibility determinations of all claims reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products under 35 U.S.C. 101. The guidance addresses the impact of Association for Molecular Pathology v. Myriad Genetics, Inc. on the Supreme Court’s long-standing “rule against patents on naturally occurring things,” as expressed in its earlier precedent including Diamond v. Chakrabarty, and Mayo Collaborative Services v. Prometheus Laboratories, Inc. Links to copies of these Supreme Court decisions, as well as a link to the Supreme Court’s decision in Funk Brothers Seed Co. v. Kalo Inoculant Co., are available at www.uspto.gov/patents/announce/myriad-mayo.jsp.

Participants who believe that the Supreme Court decisions could be implemented in an alternative manner from the approach taken in the Laws of Nature/Natural Products Guidance should use the forum to present their alternative approach and the legal rationale for the alternative. The forum will also be used by participants to suggest additional examples for use by the USPTO to create a more complete picture of the impact of Supreme Court precedent on subject matter eligibility.

Additional information including event registration, comment submission instructions and directions can be found at http://www.uspto.gov/patents/announce/myriad-mayo.jsp and in the Federal Register Notice: https://federalregister.gov/a/2014-08759.

Requests for additional information regarding the forum should be directed to Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at 571-272-7728, or by e-mail to raul.tamayo@uspto.gov.

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  1. On reviewing the top level flow chart found at:
    http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf

    I find it is most disappointing to see that the USPTO feels it owes full allegiance to the demi-gods of the Judicial Mount Olympus rather than to the US Constitution and to the actual statutory laws passed by the US Congress.

    Claims are not “directed” like arrows towards something (see faulty step 1 in the flow chart)

    35 USC 101 speaks in broad and scientifically logical terms: ANY new and useful, MACHINE, Process, Manufacture, Composition of Matter

    The mere idea of there being an “idea” is an abstraction in and of itself

    By bowing to the demi-gods of the Judicial Mount Olympus and their abstractionist babble lnaguage, the UPSTO makes a mockery of itself and dives head first into the abstract world of ideas about ideas. We have good cause to expect better than that from an agency charged with dealing with real world things. Sheesh.