While we struggle to understand the ramifications of difficult patent eligibility cases like Prometheus and Myriad, it can be helpful to examine an application that plainly fails to satisfy 35 USC § 101. When the USPTO Board of Patent Appeals and Interferences affirmed the Examiner’s rejections in Ex parte Nerenberg, it may not have added much to § 101 jurisprudence, but its holding of non-patent eligibility means that we all are free to practice the self-improvement methods described in Nerenberg’s patent application.Continue reading this entry
The day after the Supreme Court issued its unanimous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the USPTO issued a letter to the Patent Examining Corps that provides preliminary guidance to examiners and promises that more detailed guidance is forthcoming.Continue reading this entry
Last week, Dennis Crouch highlighted recent decisions from the Patent Office Board of Appeals and Interferences that evaluated the patent-eligibility of claims under 35 USC § 101. One case with relevance to biotech and pharmaceutical applicants upheld the § 101 rejection of IBM claims directed to methods for clustering genes having potential functional similarity by comparing gene expression profiles based on both the time and intensity of gene expression. In that case, In re Kelkar, the Board found that the claims failed the “machine or transformation test” (MOT) and were directed to an abstract idea, despite language that invoked the use of a computer.
Shortly after the Supreme Court issued its decision, the USPTO published "Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos." The guidance is to be used by examiners when evaluating process claims for patent-eligibility under 35 USC § 101. The Interim Guidance was effective as of its July 27, 2010 publication date, but the USPTO is accepting written public comments until September 27, 2010.
The Supreme Court’s Bilksi decision recognized three exceptions to 35 USC § 101: “laws of nature, physical phenomena, and abstract ideas.” The Federal Circuit’s decision in King Pharmaceuticals, Inc. v. Eon Labs., Inc. warns us that although satisfying the machine-or-transformation test might prove to be an effective antidote against § 101 defects, a patent claim still may be poisoned by 35 USC § 102 if the method at issue inherently flows from a prior art method—such as if it recites a newly discovered law of nature or physical phenomenon that naturally results from the prior art method.
While the Supreme Court’s recent decision in Bilski v. Kappos is gaining more attention for what it doesn’t say than what it does, it doubtless will be quoted for decades to come. Which passages gain the most foothold likely will depend on the direction the law takes in this area, but here are some that we are likely to see again, for better or for worse.