As expected, after last week’s Supreme Court decision in Mayo v. Prometheus, the Supreme Court issued a GVR order in the Myriad gene patent case. The Court Granted the petition for certiorari, Vacated the Federal Circuit opinion, and Remanded the case back to that court for a further decision in light of the Supreme Court’s Prometheus opinion. Prometheus should not have any effect on Myriad, but in light of the Supreme Court’s sweeping language and overly broad decision, who knows.
Guidance from PTO
USPTO Associate Commissioner for Patent Examination Policy Andrew Hirshfeld issued a memo to the examining corps to provide guidance on how to apply the Prometheus decision. Initially, the memo indicates that the examiners should continue to apply the Interim Bilski Guidance issued July 27, 2010. The memo continues (emphasis in original):
Examiners must continue to ensure that claims, particularly process claims, are not directed to an exception to eligibility such that the claim amounts to a monopoly on the law of nature, natural phenomenon, or abstract idea itself. In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.
Applicants must explain why such claims are drawn to an application of one of the exceptions and not solely to the law of nature, natural phenomenon, or abstract idea itself.
While the memo does mention product claims, it seems to be directed more toward a Bilski analysis with special emphasis on the law of nature exception to process claims. In part, this demonstrates what a mess this area of the law is becoming. It would seem that the PTO is also suggesting that the case does not really apply to product claims, such as those in Myriad.