WHDA Blogging Team | July 3, 2012
Since the Supreme Court issued their decision in Mayo v. Prometheus (English discussion here; Japanese discussion here), rejections of claims based on failure to comply patent-eligible subject matter requirements of §101 seem to be on the rise. Until now, Examiners had been given only very little guidance (see here), resulting in Mayo being cited inconsistently. However, today, the USPTO has provided Examiners with additional guidance about how to handle this issue. Please click below for more information:
These guidelines should improve consistency of the manner in which Mayo and related cases are relied upon by the Examining Corps, as well as provide practitioners with a basic framework for responding to such rejections.
Keep in mind that as the CAFC (and perhaps the Supreme Court, eventually) continues to address this issue in other pending cases such as Myriad and Ultramercial, these guidelines may be revised by the USPTO.