USPTO Issues New Patentability Guidelines on Products of Nature, Laws of Nature, and Natural Phenomena

by John Roberts on March 5, 2014

The USPTO has issued a new set of training materials to guide patent examiners in determining whether patent claims improperly encompass laws of nature, natural principles, natural phenomena, or products of nature, which are not patentable. The updated guidance is necessary based upon the Supreme Court’s recent decisions in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012). The USPTO is awaiting outcome of yet another decision, in the CLS Bank case, before providing similar instructions on examining claims for “abstract ideas,” another class of unpatentable subject matter.

While these guidelines do not have force of law, they are important because of their de facto power for the several hundred thousand pending patent applications:

The basic test, according to the USPTO is “whether a claim reflects a significant difference from what exists in nature” (patent eligible) or instead “whether a claim is effectively drawn to something that is naturally occurring” (not patent eligible). Of course, the difficulty is differentiating between these mutually exclusive categories.

The PTO provides the following flowchart:

pic-113

The official guidelines are attached.

myriad-mayo_guidance.pdf

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