Uncategorized : CAFC Alert

USPTO issues Interim Procedure for §101 examination after Prometheus v. Mayo

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:

2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature

Memo Cover Letter

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.

Odds and Ends

WHDA Blogging Team | April 27, 2012

A few brief points that have slipped through the cracks over the past few weeks:

  1. After the Mayo v. Prometheus Supreme Court decision, the USPTO issued a memo offering preliminary guidance to Examiners on how to incorporate the Supreme Court’s decision into their examination process.  Click here to read it.  The memo does not provide much guidance to the Examining Corps, other than some vague points to keep in mind in addition to previously issued guidance in view of the Bilski decision.   On a related point, for our discussion of the Mayo case, click here for English and click here for Japanese.
  2. The Supreme Court remanded AMP v. USPTO back to the CAFC for reconsideration in view of their Mayo decision.  See page 2 of the order.
  3. Our Stephen Parker provides further comments on the CAFC’s recent Bard decision at Medical Devices Summit (free registration required).  Read his original article on that case here.
  4. Our friends at Think IP Strategy have assembled an e-book:  2011 Think Tank IP Almanac.  Click here for more information.

 

Announcing WHDA’s free app for iPhone, iPad and iPod touch

WHDA Blogging Team | April 3, 2012

We interrupt our normal posting to make an exciting announcement!  WHDA has just released “WHDA Connect”—a free app for iPhone, iPad and iPod touch.  With it you can:

*Read our blogs about the latest patent and trademark news, with optional push notifications. Non-native English speakers will find the built-in dictionary helpful – activated when you tap-and-hold a word (requires iOS 5.0+).

*Get simple access to the most powerful IP resources on the web, such as databases of major world patent offices.

*Learn more about our services and skill sets.

*Access our directory of professionals.

*Call or email our professionals with just a tap.

*Simplify visits to our offices with GPS-guided directions.


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