• Comments on Patent Subject Matter Eligibility Guidance Due by July 31
  • August 2, 2014 | Author: Courtenay C. Brinckerhoff
  • Law Firm: Foley & Lardner LLP - Washington Office
  • This week brings the July 31, 2014 deadline for submitting written comments on two USPTO patent subject matter eligibility guidance documents: The “Myriad-Mayo” Guidance issued March 4, 2014 (for claims involving laws of nature, natural phenomena, and natural products) and the “Alice Corp. v. CLS Bank” Guidance issued June 24, 2014 (for claims involving abstract ideas). These guidance documents make clear that patent applications in all technology areas could be subject to scrutiny under 35 USC § 101, so stakeholders may not want to miss this opportunity to weigh in on how the USPTO should interpret and apply the Supreme Court decisions in Mayo, Myriad and Alice Corp.

    The Myriad-Mayo Patent Subject Matter Eligibility Guidance
    You can find the Myriad-Mayo Guidance at http://www.uspto.gov/patents/law/exam/myriad-mayo&under;guidance.pdf. If you are interested in submitting comments, you may find these articles helpful:

    • This article provides an overview of the Guidance.
    • This article highlights additional issues raised by the USPTO Training Slides.
    • This article summarizes stakeholder testimony at the July 9 USPTO Patent Eligibility Forum.
    • This article explains the negative impact of the guidance on pharmaceutical composition claims.
    • This article explains the negative impact of the guidance on vaccine claims.
    • This article explains how the Guidance goes to far in its scrutiny of method of manufacture claims and method of treatment claims.
    • This article explains how the analytical framework set forth in the Guidance is inconsistent with the Supreme Court decision in Alice Corp.

    The Alice Corp. Patent Subject Matter Eligibility Guidance
    You can find the Alice Corp. Guidance here. If you are interested in submitting comments, you may find these articles helpful:

    • This article provides an overview of the Guidance.
    • This article provides an overview of the Supreme Court decision.

    Submit Comments by July 31
    As set forth in this Federal Register Notice, the USPTO has requested written comments on both Guidance documents July 31, 2014.

    Comments on the Laws of Nature/Natural Products Guidance may be sent by electronic mail to:

    myriad-mayo&under;[email protected]

    Comments on the preliminary instructions on Alice may be sent by electronic mail to:

    alice&under;[email protected]

    Comments that apply to both may be sent to either email address.