Reaction to Prometheus

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.

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5 Responses to “Reaction to Prometheus”

  1. Pharma & Biotech Global Week in Review 28 March 2012 from IP Think Tank Says:

    [...] US: Examining subject matter eligibility under Mayo v. Prometheus – USPTO guidance for examiners  (Patently-O) (Inventive Step) [...]

  2. PTO Interim Guidance on Process Claims Involving Laws of Nature « INVENTIVE STEP Says:

    [...] this week, the PTO provided a memo to the examining corps to supercede its earlier memo for analyzing patent claims that may be implicated by the Supreme Court’s decision in Mayo v. [...]

  3. Federal Circuit Holds Isolated Genes to be Patentable Subject Matter – Again « INVENTIVE STEP Says:

    [...] vacated–decision from July 2011.  Despite the Supreme Court’s admonition to reconsider its holding in light of Prometheus (Mayo), the court again held that isolated genes constitute patentable subject matter, but that [...]

  4. Gene Patent Fight Continues « INVENTIVE STEP Says:

    [...] second question is new to this petition.  The Supreme Court issued a GVR order on this case in light of its Prometheus opinion and asked the Federal Circuit to reconsider the [...]

  5. Supreme Court to Review Myriad Case Again « INVENTIVE STEP Says:

    [...] issued its decision in Prometheus where it confused obviousness with patentable subject matter, the Court sent the Myriad case back to the Federal Circuit for reconsideration in light of that decision.  After reviewing the case again, the Federal [...]

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