PTO Provides Additional Guidance on Patent Eligibility of Life-Sciences Method Claims

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On July 14, 2016, the PTO sent a memorandum to the examining corps regarding the recent rulings in Rapid Litigation Management Ltd. v. Cellzdirect, Inc., Appeal No. 2015-1570 (Fed. Cir. July 5, 2016), and Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), cert. denied, No. 15-1102, 2016 WL 1117246 (June 27, 2016). After briefly describing the cases, the memorandum concludes that they “do not change the subject matter eligibility framework [of Mayo/Alice], and the USPTO’s current subject matter eligibility guidance and training examples are consistent with these cases.” The memorandum does acknowledge, however, that Rapid Litigation Management “provide[s] additional information and clarification on the inquiry for determining whether claims are directed to a judicial exception” to 35 U.S.C. § 101.

In fact, Rapid Litigation Management provides considerably more guidance than the memorandum acknowledges, including an explanation of why the district court erred regarding step 2 as well as step 1 of the Supreme Court’s framework for determining patent eligibility. See the more complete description in our previous article on Rapid Litigation Management, which includes seven key takeaways.

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.

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