The USPTO’s Current View on Patent Eligibility

Rebecca L. Shult
J. Peter Fasse Fish & Richardson PC

A brief description of the holdings from the most recent Supreme Court decisions.

Over the past few years, the Supreme Court of the United States has issued several decisions on the eligibility of natural methods and compositions for patent protection. In view of these decisions, the United States Patent and Trademark Office (USPTO) recently issued a guidance memorandum (Guidance) to implement new procedures that patent examiners must now use to determine whether claims to inventions that involve any natural principles, phenomena, and/or products are eligible for patent protection. This article briefly describes the holdings from the most recent Supreme Court decisions; two previous articles in this journal describe those holdings in more detail.^1,2 We then summarize the USPTO's Guidance on subject matter eligibility for natural methods and compositions and provide several strategies for obtaining patent protection under the Guidance.

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Rebecca L. Shult ([email protected]) is an associate in the Minneapolis, MN, office of Fish & Richardson PC. J. Peter Fasse ([email protected]) is a principal in the Boston, MA, office of Fish & Richardson PC.

References:
¹ J Fraser, M Rosen. Patenting genes in a post-Myriad world. Ind Biotechnol 2013;9(4):163–164.
² T Reiter, JP. Fasse Patent eligibility of biological methods and compositions. Ind Biotechnol 2013;9(3):90–92.

Industrial Biotechnology, published by Mary Ann Liebert, Inc., is a peer-reviewed bimonthly research journal focused on biobased industrial and environmental products and processes. The above article was first published in the June 2014 issue of Industrial Biotechnology with the title “The United States Patent & Trademark Office's Current View on Patent Eligibility”. The views expressed here are those of the authors and are not necessarily those of Industrial Biotechnology journal, Mary Ann Liebert, Inc., publishers, or their affiliates. No endorsement of any entity or technology is implied.