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.
You need a subscription to continue reading this content.
To access the full archive, digital magazines and special reports you will need to take out a paid subscription.
News stories up to a week old and feature articles on the day of publication are accessible with a BASIC FREE ACCOUNT.
If you have already subscribed please login.
If you have any technical issues please email tech support.
For access to the complete website, archive, and to receive print publications, choose '12 MONTH SUBSCRIPTION'. For a free, two-week trial with full access, select ‘TWO WEEK FREE TRIAL’; and for basic access to the latest news on the website and weekly email news alerts choose the 'BASIC FREE ACCOUNT' registration.
USPTO, patent eligibility, biotechnology, pharmaceuticaks, 'natural products'