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Director's Forum: A Blog from USPTO's Leadership

Thursday Jul 05, 2012

New Examining Procedure Related to Mayo v. Prometheus

Guest blog by USPTO Commissioner for Patents Peggy Focarino

I am pleased to report that Deputy Commissioner for Patent Examination Policy Drew Hirshfeld issued a memorandum to all patent examiners implementing a new procedure for examining process claims for subject matter eligibility in view of the Supreme Court decision Mayo v. Prometheus. The memorandum explains that this new procedure is intended for analyzing process claims in which a law of nature, natural phenomenon, or naturally occurring relation or correlation is a limiting element or step. This procedure will assist examiners in making the determination of whether a claim is a patent-eligible practical application of a law of nature or whether the claim is effectively drawn to the law of nature itself, like the claims found ineligible by the Supreme Court in Mayo. Along with determining subject matter eligibility in accordance with this new procedure, examiners will complete a full examination of the claims to determine whether the additional patentability requirements are met, such as novelty and non-obviousness in view of the relevant prior art.

This memorandum is designed to focus on examination of claims most directly impacted by the Mayo decision while the courts continue to address eligibility questions in pending cases, such as Assn. for Molecular Pathology v. Myriad Genetics and WildTangent v. Ultramercial. The Office will continue to follow the guidance issued after Bilski v. Kappos for examination of other types of process claims for eligibility, and it is expected that additional guidance will be issued as these pending cases are decided.

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