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Patent-Eligible Subject Matter › United States Patent and Trademark Office › Myriad-Mayo

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
McDonnell Boehnen Hulbert & Berghoff LLP

More on Professor Sarnoff's Perspective on Tillis Patent Eligibility Bill

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As promised in our earlier post (see "Professor Sarnoff Provides His Perspective on Tillis Bill"), here we turn to Professor Joshua Sarnoff's thoughts on the portions of Senator Thom Tillis' (R-NC) bill regarding diagnostic...more

McDonnell Boehnen Hulbert & Berghoff LLP

Professor Sarnoff Provides His Perspective on Tillis Bill

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Patent Docs has always ascribed to the notion that respectful debate is good for most issues, and with the adage that if you are dumb, it's best to surround yourself with smart people and if you are smart surround yourself...more

Foley & Lardner LLP

Federal Circuit, USPTO Clarify Subject Matter Eligibility for Methods of Treatment

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On June 7, 2018, the USPTO issued new guidance in the form of a memorandum regarding the patentability of methods of treatment. This memorandum, issued in response to the Federal Circuit’s holding in Vanda Pharmaceuticals...more

McAfee & Taft

Two-step analysis to assist in determining patent eligibility

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Napoleon Hill once famously said, “Whatever the mind of man can conceive and believe, it can achieve.” However, what the mind of man can conceive is not necessarily patentable. Courts have long held that laws of nature,...more

Knobbe Martens

Guide to the U.S. Patent Office’s Materials on Subject Matter Eligibility

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Since 2014, the USPTO has periodically issued examination guidance, analysis examples, and other insights to guide evaluation of patent subject matter eligibility under 35 U.S.C. § 101. These documents are available on the...more

Foley & Lardner LLP

A Look At The USPTO Patent Eligible Subject Matter Report

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On July 24, 2017, the USPTO issued a 48-page report on Patent Eligible Subject Matter. The report summarizes key court decisions interpreting and applying 35 USC § 101, international views on eligible subject matter, and...more

Fenwick & West LLP

Exploring the Legal Contours of Patent Subject Matter Eligibility

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I'd like to go back to some first principles and history. Article 1, Section 8 of the Constitution neatly divided the promotion of, on the one hand: Science, the fields of knowledge and ideas, by securing exclusive...more

Bracewell LLP

Patentee's Day of Thanks Comes in Early November: Assessment of the USPTO's Recent Memorandum Regarding Patent Eligibility for...

Bracewell LLP on

A recent U.S. Patent & Trademark Office (USPTO) memorandum to the Patent Examining Corps, in combination with precedential cases from the Federal Circuit, provides positive guidance to owners of software patents and patent...more

Fenwick & West LLP

More Lessons From McRo

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My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the...more

Knobbe Martens

New USPTO Subject Matter Eligibility Guidance Following CellzDirect and Sequenom

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On July 14, 2016, the U.S. Patent and Trademark Office issued new subject matter eligibility guidance for life science claims following a ruling by the Federal Circuit in Rapid Litigation Management v. CellzDirect, No....more

Fenwick & West LLP

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 1)

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Two years ago this Sunday, the Supreme Court in Alice Corp. Pty Ltd. v. CLS Bank Int'l addressed a relatively narrow issue: does a claim reciting a generic computer implementation transform an abstract idea into a...more

Ladas & Parry LLP

IP Developments In Biotechnology And Trade Secrets

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2016 has been a year of IP changes and these changes have had an effect upon biotechnology as well as trade secrets. Patents: Will the U.S. Supreme Court Grant Cert. In Ariosa v. Sequenom? Ariosa v. Sequenom was...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Recent PTO Guidance on Subject Matter Eligibility: Lessons

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A few years ago, former PTO Solicitor General Nancy Linck arose from the audience at the BIO International Conference to provide her thoughts on how the Office had responded to the Supreme Court's decisions in Mayo v....more

Mintz

UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Abstract Ideas

Mintz on

All patent applications submitted to the United States Patent And Trademark Office (USPTO) are examined subject to the requirements set forth in 35 U.S.C. §§101, 102, 103, 112, which respectively address patent eligibility,...more

Knobbe Martens

Federal Circuit Review | January 2016

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The Federal Circuit Will Review Appeals from Inter Partes Review Proceedings Under the “Substantial Evidence” Standard - In Merck & Cie v. Gnosis S.p.A., Appeal No. 2014-1779, the Federal Circuit affirmed a PTAB IPR...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

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It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

Foley & Lardner LLP

Patenting Stem Cells in View of the USPTO’s New Interim Guidance

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Late last year, the USPTO issued its modified and revised 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Guidance) to assist patent examiners and the public in determining if a claim presented for...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Holds Forum on Interim Guidance -- Part I

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In a forum held January 21 on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more

McDermott Will & Emery

USPTO Releases Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

McDermott Will & Emery on

2014 Interim Guidance on Patent Subject Matter Eligibility - On December 15, 2014, the U.S. Patent & Trademark Office (USPTO) released examination guidelines titled 2014 Interim Guidance on Patent Subject Matter...more

Wilson Sonsini Goodrich & Rosati

USPTO Issues New Guidance with Fewer Limitations on the Subject Matter Eligibility of Patent Claims

Wilson Sonsini Goodrich & Rosati on

The U.S. Patent and Trademark Office (USPTO) today released its latest iteration of guidance—referred to as the "Interim Eligibility Guidance"—to its examiners. This guidance is aimed at assessing whether an invention claimed...more

McDonnell Boehnen Hulbert & Berghoff LLP

Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine -- Part II

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On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural...more

McDonnell Boehnen Hulbert & Berghoff LLP

Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine

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On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural...more

Knobbe Martens

Patent Update for IT and Biotech Companies: New Pieces to the Patent Puzzle

Knobbe Martens on

In This Presentation: - PATENT ELIGIBLE SUBJECT MATTER: LIFE IN SOFTWARE/IT AFTER ALICE CORPORATION V. CLS BANK (AND OTHER RECENT 101 DECISIONS) - A Brief History with respect to Software and Biz Methods ...more

McDonnell Boehnen Hulbert & Berghoff LLP

BIO IPCC Panel Discusses Impact of Myriad-Mayo Guidance

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Yesterday, we reported on a session of the Biotechnology Industry Organization (BIO) Intellectual Property Counsel's Committee fall conference, which took place earlier this week in Nashville, TN, in which the U.S. Patent and...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Provides Update on Status of Revised Myriad-Mayo Guidance

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During a session of the Biotechnology Industry Organization (BIO) Intellectual Property Counsels Committee (IPCC) fall conference, which took place this week in Nashville, TN, the U.S. Patent and Trademark Office provided a...more

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