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USPTO Issues Interim Mayo Guidance ~pj
Friday, March 23 2012 @ 07:26 PM EDT

The US Patent and Trademark Office, Patently O reports in the article "Examining Subject Matter Eligibility under Mayo v. Prometheus", has distributed a memo [PDF] with interim guidance on how to evaluate patent submissions now that the U.S. Supreme Court has spoken.

He calls it a conservative new approach to process claims. That makes me smile. Patently O's Dennis Crouch says the memo doesn't directly say whether examiners should use the same analysis "when considering claims that include an 'abstract idea' such as a mathematical algorithm (i.e., software)." But I think it does. In this sentence, to be precise: "In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto." Why *wouldn't* that apply to software?

I thought you'd like to read the entire memo. So I've done it as text for you. It mentions the USPTO's Interim Bilski Guidance, and you'll find that here. The USPTO will think more deep thoughts on this subject, study the two decisions, and come up with final guidance later. Crouch thinks they'll likely wait until the Myriad case is also decided. I can't wait.

*****************

[USPTO logo]

MEMORANDUM

DATE: March 21, 2012

TO: Patent Examining Corps

FROM: Andrew H. Hirshfeld
Associate Commissioner
For Patent Examination Policy

SUBJECT: Supreme Court Decision in Mayo Collaborative Services v. Prometheus
Laboratories, Inc.

Yesterday, in a unanimous decision, the Supreme Court held that the claims in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Mayo) effectively claim a law of nature and are not patent-eligible under 35 U.S.C. 101. The purpose of this memorandum is to provide preliminary guidance to the Patent Examining Corps. Additional guidance on patent subject matter eligibility under 35 U.S.C. 101 will be issued soon.

Claims to Law of Nature Itself Are Not Patent-Eligible

The claims in Mayo are directed to a process of medical treatment. Claim 1 is representative:

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8X108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8X108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The Supreme Court found that because the laws of nature recited by the patent claims the relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage will prove ineffective or cause harm are not themselves patent-eligible, the claimed processes are likewise not patent-eligible unless they have additional features that provide practical assurance that the processes are genuine applications of those


laws rather than drafting efforts designed to monopolize the correlations. The additional steps in the claimed processes here are not themselves natural laws, but neither are they sufficient to transform the nature of the claims. In this case, the claims inform a relevant audience about certain laws of nature. Any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community. Those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. The Court has made clear that to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words "apply it." Essentially, appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible.

The decision rested upon an examination of the particular claims in light of the Court's precedents, specifically Bilski, Flook and Diehr. The Court repeated the long standing exceptions (laws of nature, natural phenomena, and abstract ideas) to categories of patent eligibility defined in 35 U.S.C. 101. In conducting the analysis, the Court addressed the "machine-or-transformation" test explained in Bilski with a reminder that the test is an "important and useful clue" to patentability but that it does not trump the "law of nature" exclusion. A claim that recites a law of nature or natural correlation, with additional steps that involve well-understood, routine, conventional activity previously engaged in by researchers in the field is not patent-eligible, regardless of whether the steps result in a transformation. On the other hand, reaching back to Neilson, the Court pointed to an eligible process that included not only a law of nature (hot air promotes ignition) but also several unconventional steps (involving a blast furnace) that confined the claims to a particular, useful application of the principle.

Preliminary Guidance on Examination Procedure

As part of a complete analysis under 35 U.S.C. 101, examiners should continue to examine patent applications for compliance with section 101 using the existing Interim Bilski Guidance issued July 27, 2010, factoring in the additional considerations below. The Interim Bilski Guidance directs examiners to weigh factors in favor of and against eligibility and reminds examiners that, while the machine-or-transformation test is an investigative tool , it is not the sole or a determinative test for deciding whether an invention is patent-eligible.

Examiners must continue to ensure that claims, particularly process claims, are not directed to an exception to eligibility such that the claim amounts to a monopoly on the law of nature, natural phenomenon, or abstract idea itself. In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.

If a claim is effectively directed to the exception itself (a law of nature, a natural phenomenon, or an abstract idea) and therefore does not meet the eligibility requirements, the examiner

2


should reject the claim under section 101 as being directed to non-statutory subject matter. If a claim is rejected under section 101 on the basis that it is drawn to an exception, the applicant then has the opportunity to explain why the claim is not drawn solely to the exception and point to limitations in the claim that apply the law of nature, natural phenomena or abstract idea.

The USPTO is continuing to study the decision in Mayo and the body of case law that has evolved since Bilski and is developing further detailed guidance on patent subject matter eligibility under 35 U.S.C. 101.

3



  


USPTO Issues Interim Mayo Guidance ~pj | 94 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here please
Authored by: jesse on Friday, March 23 2012 @ 07:49 PM EDT
Thank you

[ Reply to This | # ]

News Pick discussions
Authored by: jesse on Friday, March 23 2012 @ 07:50 PM EDT
Thank you.

[ Reply to This | # ]

Off topic discussions
Authored by: jesse on Friday, March 23 2012 @ 07:50 PM EDT
Thank you.

[ Reply to This | # ]

COMES thread
Authored by: jesse on Friday, March 23 2012 @ 07:51 PM EDT
Thank you.

[ Reply to This | # ]

But.. But.. But.. It's Big Business!
Authored by: artp on Friday, March 23 2012 @ 08:50 PM EDT
I look forward to the day when natural processes are looked
at as something to study and understand BEFORE trying to
rake in the moolah by deforming, distressing and demolishing
them.

There are copyrighted trees, bushes and vines. You have to
sign a contract that says that you agree never to take
cuttings from them for grafting onto different rootstock.
Even worse, some of these copyrighted plants came from
Universities. Almost every piece of fruit that you have ever
seen came from a grafted plant. In rare cases, you can find
fruit from "own-root" plants, ones that were not grafted
onto rootstock from a different fruit variety. So
restricting grafting is like restricting planting or
harvesting or any other basic farming process.

For centuries, farmers shared their discoveries with each
other, so that they could advance together. The community
was more important than the individual. There are some
definite advantages to that world-view. It minimizes
conflict, for one thing. It minimizes the gap between rich
and poor. It keeps people together and learning from each
other.

DNA, plant tissue, animals, life in general should not be
copyrighted, trademarked or patented. Patent the tools
needed to create new varieties, but realize that the results
are non-repeatable, and thus not eligible for protection.

Man is not smart enough to create life wisely. To see what
can go wrong, just look at the many state Dep't of Natural
Resources restocking programs, designed to bring back
selected wildlife without recreating the environment that
they flourished in.

Perhaps we should concentrate on understanding where we are
first? We are not wise enough to save the world, yet we
give people a bye to try it if they can make money on it.
What is wrong with this picture?

---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

USPTO Issues Interim Mayo Guidance ~pj
Authored by: AntiFUD on Friday, March 23 2012 @ 09:02 PM EDT
What is this 'claim' whereof this Guide speaks to so obtusely?

I have learned here on Groklaw that patents teach, and apparently therein there
are two distinct types of claims; namely dependent and independent. Such claims
basically restrict and/or focus the scope of the patent, and refine the breadth
of the application of the patent wrt an infringing article.

Upon re-examination of a number of Oracle's patents, I understand that a number
of claims were dropped and/or reworded (and sometimes supplemented with
apparently new claims) in order to avoid invalidation caused, mainly, by
Google's magnificent search for prior art. Somehow, I got the impression that
the necessitated changes sometimes makes such patent inapplicable to covering
potential infringement by Android/Dalvik.

Hence my frustration/confusion by the last sentence of the penultimate paragraph
of the Memorandum:

"If a claim is rejected under section 101 on the basis that it is drawn to
an exception, the applicant then has the opportunity to explain why the claim is
not drawn solely to the exception and point to limitations in the claim that
apply the law of nature, natural phenomena or abstract idea."

How can an applicant explain that a patent's claim (based on a law of nature,
natural phenomena or abstract idea) does not rely, as a basis, on such law of
nature, natural phenomena or abstract idea?

If the patent would stand without such law of nature, natural phenomena or
abstract idea why does it need to include such in its recital?

What am I missing? Apart from a few gray cells!

---
IANAL - Free to Fight FUD - "to this very day"

[ Reply to This | # ]

Why *wouldn't* that apply to software?
Authored by: Anonymous on Friday, March 23 2012 @ 09:09 PM EDT
Because software isn't abstract, in their view. It might be math,
but it's specific algorithms with defined parameters. Stuff that
didn't exist in nature until it was "invented". Oh, that's abstract?

[ Reply to This | # ]

USPTO Issues Interim Mayo Guidance ~pj
Authored by: PolR on Friday, March 23 2012 @ 11:16 PM EDT
There are interesting comments on the Patently'O article. Let me point to this one where the commenter writes as if he were Einstein: (extract of the comment go see the original for the full text)
""Laws of nature" are inherently already in the public domain"

No. This is a fallacy.

For example, take one of my equations.

My equation was not existing at the time I "discovered" it.

My equation is not a "law" of nature, because it is not an actual fact. It is a man made (by me) emperical tool and a representation of how I believe nature to act.

It is a map.

A map is not the real world.

I am not agreeing with the above. I just point out that there are people defending this position.

[ Reply to This | # ]

Deep Thought at the USPTO
Authored by: Ian Al on Saturday, March 24 2012 @ 04:56 AM EDT
All those decades of computation and they come up with the answer to Life, the
Universe and Everything...

42!

Apparently, it was the landing of captains, hairdressers and patent lawyers that
damaged the workings of Deep Thought.

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | # ]

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