We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis. Today’s post is entitled, “USPTO Issues Guidance on Mayo v. Prometheus”, and it discusses the USPTO’s memorandum regarding the Mayo v. Prometheus Supreme Court decision. According to the post, “The three-page memo, sent by Associate Commissioner for Patent Examination Policy Andrew Hirshfeld, notes that the guidance provided is preliminary and that “[a]dditional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.”
Here is an excerpt:
One day after the Supreme Court reversed the Federal Circuit in Mayo Collaborative Services v. Prometheus Laboratories, Inc., finding Prometheus’ diagnostic method claims to be invalid for “effectively claim[ing] underlying laws of nature,” the U.S. Patent and Trademark Office issued amemorandum to its examining corps providing the Office’s preliminary guidance regarding the High Court’s decision. The three-page memo, sent by Associate Commissioner for Patent Examination Policy Andrew Hirshfeld, notes that the guidance provided is preliminary and that “[a]dditional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.”
Under the heading “Claims to Law of Nature Itself Are Not Patent-Eligible,” the memo begins by reciting claim 1 of Prometheus’ U.S. Patent No. 6,355,623. In summarizing the Court’s decision, the memo states that:
The Supreme Court found that because the laws of nature recited by the patent claims — the relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage will prove ineffective or cause harm — are not themselves patent-eligible, the claimed processes are likewise not patent-eligible unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations. The additional steps in the claimed processes here are not themselves natural laws, but neither are they sufficient to transform the nature of the claims.
In this case, the claims inform a relevant audience about certain laws of nature. Any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community. Those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. The Court has made clear that to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” Essentially, appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible.
To read, “USPTO Issues Guidance on Mayo v. Prometheus” in full, please click here.
Tags: Mayo v. Prometheus, Patent Docs, USPTO
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