USPTO March 2014 Update to Guidance & Training for Evaluating Utility Patent Subject Matter Eligibility for Claims involving Nature, Natural Phenomena, & Natural Products


In response to recent U.S. Supreme Court decisions addressing utility patent subject matter eligibility under 35 U.S.C. § 101, the U.S. Patent & Trademark Office issued new guidance and training materials for patent examiners tasked with determining eligibility of machine, composition, manufacture and process claims “involving laws of nature,  natural phenomena, and natural products.”  The USPTO published the guidance memorandum and training slides, requesting public comment and suggestions for future examiner training.

The USPTO explained that the new guidance replaces current guidance for process claims involving laws of nature, based on Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012), and product claims reciting nucleic acids, based on Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013). In the USPTO’s view, Myriad impacted the Supreme Court’s stance on the inability to patent naturally occurring things by:

rel[ying] on [Diamond v. Chakrabarty, 447 U.S. 303 (1980)] as “central” to the eligibility inquiry, and re-affirm[ing] the Office’s reliance on Chakrabarty’s criterion for eligibility of natural products (i.e., whether the claimed product is a non-naturally occurring product of human ingenuity that is markedly different from naturally occurring products). Id. at 2116-17. Myriad also clarified that not every change to a product will result in a marked difference, and that the mere recitation of particular words (e.g., “isolated”) in the claims does not automatically confer eligibility. Id. at 2119.

The new guidance does not change the analysis of claims reciting abstract ideas. The USPTO will continue to use existing guidance for such claims, as the law in this area is “unsettled” and the Supreme Court will consider the abstract idea judicial exception this year.  A Quick Reference Sheet summarizing the new guidance also is available. Additional information can be found here and comments can be sent to the USPTO via email to:

Written by:

Published In:

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.

© Moore & Van Allen PLLC | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »


By striving for excellence, Moore & Van Allen has become one of the largest law firms in the... View Profile »

Follow Moore & Van Allen PLLC:

Reporters on Deadline

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* 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.