The USPTO has issued Interim Guidance on Patent Subject Matter Eligibility for US Examiners determining eligibility under 35 U.S.C. 101 in view of the recent decisions in Alice, Myriad and Mayo. The guidance is interim in nature only and the USPTO expects to update it in response to feedback. Comments may be submitted to the USPTO until 16 March 2015.

The revised guidance supplements the June 2014 guidance relating to Alice and supersedes the March 2014 guidance relating to Mayo and Myriad. The revised guidance applies to all types of subject matter from the biotech field (nature-based products) through to the computer software/business method fields (abstract ideas).

The guidance uses the two-step analysis that cropped up in Mayo and which was also discussed in Alice. In a change to earlier guidance the revised guidance applies to claims which are directed to a judicial exception rather than claims that only involve a judicial exception. A number of claim examples have been developed that illustrate the analysis put forth in the revised guidance. It is noted that currently the USPTO website only covers examples in the Myriad/Mayo fields but that further examples in the software field should be added shortly.

• 2014 Interim Eligibility Guidance
• SCOTUS decision: Alice Corp. Pty. Ltd. v CLS Bank Int’l 
• SCOTUS decision: Association for Molecular Pathology v Myriad Genetics
• SCOTUS decision: Mayo v Prometheus
• Nature-Based Product Examples
• Blog by USPTO Commissioner for Patents Peggy Focarino

Mark Richardson  17 December 2014