United States Patent and Trademark Office: Update to Examiner Guidance on Patent Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) has just released the update of examiner guidance on patent subject matter eligibility. This update is in view of the decisions of the United States Supreme Court for Alice Corp., Myriad, and Mayo. This latest guidance includes a new set of life science examples, an examiner memorandum, which is a memorandum to the patent examining corps with instructions on formulating patent subject matter eligibility rejections and responding to replies of patent applicants, an index of eligibility examples, and an appendix of patent subject matter eligibility court decisions.

 

In particular, the life science examples provided (for detailed information, please visit http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex.pdf) show the various ways that patent claims can be drafted to ensure eligibility. Patent applicants and patent examiners can be assisted in resolving patent subject matter eligibility issues in life science areas. The life science examples provided include certain technologies, such as vaccines and diagnostics.

 

The examiner memorandum (for detailed information, please visit http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-memo.pdf) aims to promote greater consistency throughout the patent examining corps in evaluating whether the claimed subject matter is eligible for patenting, clearer office actions that will assist patent applicants in determining how to respond to patent subject matter eligibility rejections, and greater assurance that the responses of patent applicants are thoughtfully considered by the examiner in determining whether to maintain a patent subject matter eligibility rejection.

 

Source of Information:

http://www.uspto.gov/blog/director/entry/update_to_examiner_guidance_on

 

Keywords:

USPTO; Examiner Guidance; Patent Subject Matter Eligibility