Earlier 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. Prometheus. The PTO calls the guidance “interim” because the Myriad and Ultramercial cases have been remanded by the Supreme Court and are pending at the Federal Circuit. Thus, this guidance may require updating once opinions are issued in those cases.
The memo provides a summary of the analysis to be undertaken to determine patent eligibility for claims that include natural principles.
In summary, process claims having a natural principle as a limiting element or step should be evaluated by determining whether the claim includes additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, and are sufficient to ensure that the claim amounts to significantly more than the natural principle itself.
Process claims that do not include a law of nature or naturally occurring phenomenon should continue to be analyzed under the PTO’s 2010 Interim Bilski Guidance.
In analyzing claims that may be implicated by this policy, examiners are to address three questions.
1. Is the claimed invention directed to a process, defined as an act, or series of acts or steps?
2. Does the claim focus on use of a law of nature, a natural phenonenon, or naturally occurring relation or correlation? (Is the natural principle a limiting feature of the claim?
3. Does the claim include additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, or are sufficient to ensure that the claim amounts to significantly more than the natural principle itself? (Is it more than a law of nature + the general instruction to simply “apply it”?)
The heart of the matter, of course, is the third inquiry. The memo provides a number of examples taken from judicial opinions and others to attempt ot provide guidance on this inquiry.
Responses to rejections based on this inquiry may include amendments to add additional steps or amend existing steps or acts that are not merely conventional or well-known (this is based on the Supreme Court’s confusion of prior art and patentable subject matter).
The bottom line is that this analysis is confusing and difficult to determine. The PTO did a decent job of providing this guidance given that the Supreme Court’s opinion is not a model of clarity on how to handle these issues.
The memo continues to emphasize that under the principles of compact prosecution, examiners should also examine these claims for patentability under the other sections of the Patent Act as well. Only in the most extreme cases would a § 101 rejection alone be appropriate.