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ARTICLE · 10 MARCH 2014

USPTO Issues New Subject Matter Guidance Post-Myriad And Prometheus

The United States Patent and Trademark Office (USPTO) issued a new guidance document for Examiners on March 4, 2014.

CanadaIntellectual Property

The United States Patent and Trademark Office (USPTO) issued a new guidance document for Examiners on March 4, 2014, effective immediately, describing revised procedures for assessing subject matter eligibility of claims involving or reciting laws of nature, natural principles, natural phenomena, and/or natural products (hereinafter "2014 Guidelines"). The 2014 Guidelines are intended to reflect changes to the law arising from recent Supreme Court decisions in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013) ("Myriad"), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. _,132 S. Ct. 1289, 101 USPQ2d 1961 (2012) ("Prometheus"). The Myriad decision, which we have previously discussed, was limited to the patent-eligibility of human DNA sequences. While acknowledging the limitations of the Myriad decision, the USPTO argues that: "[...] while the holding in Myriad was limited to

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