On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The Memorandum provides instructions for examiners to follow when applying the two-step eligibility test described in the USPTO’s Subject Matter Eligibility Guidance documents published over 2014 and 2015. If followed by effective implementation, the Memorandum will provide welcome relief to patent applicants concerned about rebutting insufficiently formulated rejections under 35 U.S.C. § 101. The USPTO also published six new Subject Matter Eligibility Examples applicable to the Life Sciences, including the fields of precision medicine and companion diagnostics. Here are some quick takeaways.
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