On December 15, 2014, the United States Patent and Trademark Office (“USPTO”) published revised guidelines for USPTO personnel to use in evaluating subject matter eligibility of inventions under 35 U.S.C. § 101. The revised guidelines can be found here.
The revised guidelines are in response to criticism received by the USPTO regarding their previous guidelines (found here) issued in the wake of the Supreme Court’s decisions concerning subject matter eligibility of biopharma inventions in Ass’n for Molecular Pathology, et al. v. Myriad Genetics, Inc.,1 and Mayo Collaborative Servs., et al. v. Prometheus Labs., Inc.2 The revised guidelines also now address subject matter eligibility of computer and software inventions, which were the focus of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l3 (issued after the previous guidelines were published).
Compared with the previous guidelines, the revised guidelines are less restrictive, which suggests that the USPTO will be more lenient with respect to subject matter eligibility of inventions. If so, this should lead to the issuance of more patents than would be issued under the previous guidelines. The revised guidelines, moreover, provide greater clarity to the subject matter eligibility analysis, since they include more examples of how the guidelines will be applied.
The revised guidelines are effective immediately and supersede the previous guidelines. The USPTO, however, plans to hold a public forum on January 21, 2015 regarding the guidelines and is seeking written comments on the guidelines by March 16, 2015.