Update From the May 9, 2014 USPTO Patent Eligibility Guidelines Forum


On May 9, 2014, the USPTO hosted a forum to receive public feedback on the patent subject matter eligibility guidance for examiners circulated on March 4, 2014. The USPTO heard formal presentations from ten speakers (including myself) and comments from audience members. Most speakers suggested alternative approaches to applying the Supreme Court’s “product of nature” and “law of nature” jurisprudence, and emphasized the dire consequence that the guidance could have on investment and innovation in the chemical, biotechnology and pharmaceutical industries. 

While I expect the guidance to be modified eventually, one of my concerns is what to do in the meantime. Here are five points I came away with on that issue:

  1. The USPTO is not likely to withdraw the guidance. 
  2. The USPTO is open to reconsidering, revising, and supplementing the guidance.
  3. The USPTO would like to receive written public comments on the guidance ”by the end of June.”
  4. The USPTO urges the public to suggest alternative analytical frameworks, additional or alternative factors to be considered, and additional examples of eligible and ineligible claims.
  5. The USPTO advises applicants to respond to new § 101 rejections as they would to any other rejection, using the framework outlined in the guidance, and appealing rejections that are believed to be contrary to law.

I encourage all practitioners and stakeholders to review the USPTO guidance and provide thoughtful feedback to the USTPO as soon as possible. (You can find the USPTO patent eligibility guidelines, related information, and instructions for submitting comments on the USPTO’s Myriad-Mayo Guidance webpage.)

View This Blog


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley & Lardner LLP | Attorney Advertising

Written by:


Foley & Lardner LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.