Posts Tagged: "subject matter eligibility"

USPTO issues guidance on patent eligibility of method of treatment claims in light of Vanda Pharmaceuticals

On June 7, 2018, the USPTO issued new guidance to its examining corps in the form of a memorandum discussing the Federal Circuit’s April 13, 2018 decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Circ. 2018). The memo indicates that it is intended to “addresses the limited question of how to evaluate the patent eligibility of ‘method of treatment claims’ in light of the Federal Circuit decision in Vanda” and also states, perhaps in a nod to the leadership of new USPTO Director Andrei Iancu, that “[t]he USPTO is determined to continue its mission to provide clear and predictable patent rights in accordance with this rapidly evolving area of the law, and to that end, may issue further guidance in the area of subject matter eligibility in the future.”

Alternative Routes to Protection of Innovation

Every year different groups provide rankings of patent prosecution law firms and a company’s patent count for the year.  Patent law firms will tout their rankings based upon the number of filings at the U.S. Patent and Trademark Office (USPTO) or the number of allowances they obtained for clients over the previous year.  And companies will boast about their patent prowess based upon the size of their portfolios. But things are changing. Innovative algorithms and even diagnostic methods may be easier and more effectively protected by trade secret.  Trade secret protection avoids the uncertainty of compliance with the vague patentability standard set forth by the Supreme Court.