On March 4, 2014, the US Patent and Trademark Office (PTO) issued a guidance entitled, “Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Natural Principles, Natural Phenomena, And/Or Natural Products.”
This guidance has been controversial since it was issued. As a result of this controversy, on Friday, May 9, the PTO held a forum to hear public comment on the guidelines. Janet Cord, a partner of the firm, was present at the forum.
Officials from the PTO opened the meeting and explained that the guidelines were the result of considering a number of U.S. Supreme Court decisions, including American Fruit Growers, Funk Brothers, Chakrabarty, Myriad, Mayo, Benson, Flook, Bilski and Diehr, discussed in our corresponding article on patent eligible subject matter, which is why the guidelines were written so broadly.
The major criticisms discussed at the forum were the scope of the guidelines, including the PTO’s interpretation of the U.S. Supreme Court decisions, the number of factors that are to be considered in determining whether something is patent-eligible, the focus on structure rather than function, and the increased cost to applicants and the patent system. There were also many comments that the guidelines focused on claim elements rather than on the claim as a whole.
While it could be accepted that the test for patent eligibility could be flexible, the attendees were critical of the multi-step analysis in the guidance required to establish that something is patent-eligible. Suggestions were made that the PTO establish a simpler analysis and add more examples to the guidance.
In response to comments regarding rejections under the guidance, the PTO advised applicants to offer a point-by-point rebuttal to the analysis presented by the examiners.
The PTO is reviewing this guidance, and it is expected that a revision will be issued. The PTO has set a deadline of June 30, 2014 for comments, which may be submitted to firstname.lastname@example.org.