The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also published a Memorandum to the Examining Corps that provides guidance on how examiners should formulate subject matter eligibility rejections and evaluate applicant responses. Both documents have me wondering if the USPTO may be attempting to swing the patent eligibility pendulum back towards the center, but until the Federal Circuit–or the Supreme Court–provides more coherent guidance, § 101 will continue to impact the scope of diagnostic and “nature-based” product patents.
I’ll be sharing my initial thoughts on the new examples at the Kansas Bar Association’s Midwest Intellectual Property Institute on Friday, May 6, 2016, and will provide a more detailed analysis of the new examples in a future article.