Subbotina Anna / Shutterstock.com
The new examination guidelines do not carry the weight of law, and it is not likely that their more extreme aspects will withstand judicial scrutiny, but practitioners need to keep tabs on court decisions, says Courtenay C. Brinckerhoff.
In March 4, 2014, the US Patent and Trademark Office (USPTO) published examination guidelines designed to aid examiners in applying the principles of recent Supreme Court decisions addressing when inventions relating to laws of nature, natural phenomena, and natural products are eligible for patenting under 35 USC §101.
While the guidelines respond directly to Molecular Pathology v Myriad Genetics, Inc, 133 SCt 2107 (2013), and Mayo Collaborative Services v Prometheus Laboratories, Inc, 132 SCt 1289 (2012), they also draw from older Supreme Court decisions, such as Diamond v Chakrabarty, 447 US 303 (1980), and Funk Brothers Seed Co v Kalo Inoculant Co, 333 US 127, 131 (1948), and reach subject matter far beyond the ‘isolated DNA’ at issue in Myriad and the personalised medicine methods at issue in Prometheus.
Indeed, many have criticised the guidelines for broadening the exceptions to patent eligibility and threatening to discourage investment and innovation in biotechnology, pharmaceuticals, and personalised medicine.
Life Sciences Intellectual Property Review (LSIPR) tracks the increasing challenges for intellectual property specialists in the rapidly evolving world of life sciences. From gene patents to stem cell research, we provide the very best news and analysis.
To continue reading this article and to access 4,500+ articles, our digital magazines and special reports published for LSIPR subscribers only then you will need a subscription.
If you are already subscribed please login.
Official LSIPR subscribers include:
Allen & Overy
Arnold & Siedsma
Birch, Stewart, Kolasch & Birch LLP (BSKB)
Carpmaels & Ransford
Cooley
European Patent Office
Finnegan LLP
GH Research
Gowling WLG
George Washington Law School
HGF Limited
IQVIA
Kirkland & Ellis International LLP
Marks & Clerk
Mintz Levin
NiKang Therapeutics Inc.
Powell Gilbert LLP
Procopio, Cory, Hargreaves & Savitch LLP
Taylor Wessing
The United States Patent and Trademark Office (USPTO)
Valea AB
World Intellectual Property Office
For multi-user price options, or to check if your company has an existing subscription we can add you into for FREE, please contact Atif at achoudhury@newtonmedia.co.
If you have any technical issues please email tech support.
USPTO, patent eligibility, biotechnology, pharmaceuticaks, 'natural products'