In an ever increasingly futile effort to define what the Supreme Court set out as subject matter eligibility for patentable material, the USPTO has issued a new set of guidelines for examiners to follow.
The Supreme Court’s decisions in Alice Corp., Myriad, and Mayo have sent the patent world into a spin.
The new guidance provides claim examples to illustrate the analysis set forth in the guidance. Nature-based product examples are posted here. Examples relating to abstract ideas will be released shortly.
Although these are welcome, these won’t be the last guidelines issued. The USPTO’s interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court is not always correct, and other court decisions will affect the guidelines in the future.
Unfortunately, the examining corps of the PTO rarely gets it correct due to insufficient training and a jump to conclusions not based on the actual precedence set by the Court.
The new guidelines, mostly issued in response to Myriad and Mayo, are a long time coming from those decisions. The changes were triggered by the feedback received from the public.
However, they are trying. The PTO continues to seek feedback to refine the guidance given to the examining corps. Now, if they would only read and follow the instructions, it would make life easier for applicants.
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If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, please contact me for a free 30 minute consultation at or call (213) 785-8070 and ask for Norman.
– Ex astris, scientia –
I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +
Norman
