Update on Mayo Myriad Patent Eligibility From USPTO BCP Partnership Meeting

On September 17, 2014, the USPTO held the first “bicoastal” Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting, with live participation from the USPTO’s main campus in Alexandria, VA and from San Jose University in San Jose, CA. The last item on the agenda was a panel on the Mayo-Myriad Guidance, so I joined the meeting by WebEx to hear what the panelists had to say about the current state of patent eligibility rejections and how to overcome them.

June Cohan of the USPTO Office of Patent Legal Administration gave an overview of where the USPTO stands in its process of reviewing the public comments that were submitted in response to the March 4, 2014 Guidance and preparing revised Guidance. The good news is that, based on her comments, it sounds like the revised Guidance could be helpful, and could address at least the most surprising and problematic aspects of the original Guidance. The not-so-good news is that the revised Guidance may not be issued for another “month or so,” which means that we may have to respond to Office Actions that rejected claims under the original Guidance without the benefit of the revised Guidance.

When asked how Applicants should address rejections that are inconsistent with the USPTO’s current views (which appear to be more flexible than the Guidance has been applied by some examiners), USPTO representatives suggested that Applicants first speak with the Examiner, then speak with the Supervisor, then (if necessary) speak with a Group Director, or file a response explaining their positions in writing.

The stakeholder panelists discussed the impact of the Guidance on their ability to patent important technology, uneven application of the Guidance by different examiners, and the problematic uncertainty created by the Guidance.

Although the meeting did not reveal any sure-fire strategies for overcoming patent eligibility rejections, USPTO representatives agreed that the patent eligibility requirement should be a low hurdle, and that applicants should not have to unduly restrict the scope of their claims to satisfy § 101. Hopefully the revised Guidance will make these points clear to examiners and we can go back to worrying about novelty, non-obviousness, written description and enablement.

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