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ARTICLE · 05 JANUARY 2015

PTO Issues New Draft Guidance For Determining Patent-Eligible Subject Matter

Morrison Foerster
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The United States Patent and Trademark Office (PTO) issued interim guidance for use by its personnel when determining patent-eligible subject matter under 35 U.S.C. § 101

United StatesIntellectual Property
Cary Miller
Cary Miller
B. Scott Silverman
B. Scott Silverman
Aaron Parker (Summer Associate)
Aaron Parker (Summer Associate)
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The United States Patent and Trademark Office (PTO) issued interim guidance for use by its personnel when determining patent-eligible subject matter under 35 U.S.C. § 101 ("Section 101"). The new guidance will alter the way patent examiners assess patent applications for subject matter eligibility, and may provide some relief to patent applicants and holders in the life sciences. The new guidance attempts to create a uniform approach to analyzing subject matter eligibility by incorporating the Supreme Court's decisions in Mayo,1 Myriad,2 and Alice,3 which collectively addressed the law regarding subject matter eligibility for life sciences, software, and business methods.

The PTO also issued a series of updated examples that illustrate the latest guidance for natural products, and announced plans to issue additional examples for abstract ideas and software-related patents in the coming weeks.

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