USPTO Extends Deadline for Providing Feedback on Myriad-Mayo Guidance

By Donald Zuhn --

As we reported earlier this week, the period for submitting written comments to the U.S. Patent and Trademark Office regarding the Office's Myriad-Mayo guidance memorandum has been extended to July 31, 2014.  The Office initially announced a soft deadline of the end of June for submitting written comments at its May 9th forum on the guidance memorandum (officially entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products").  On the USPTO webpage regarding the guidance, the Office noted that "[i]n response to several requests from our stakeholders for additional time to submit comments, the Office has extended the period for submission of public comments until July 31, 2014" (emphasis in original).  At the 2014 BIO International Convention, which took place this week in San Diego, Drew Hirshfeld, USPTO Deputy Commissioner for Patent Examination Policy, and June Cohan, a Legal Advisor with the USPTO's Office of Patent Legal Administration, took part in a BIO session that provided some initial observations regarding the written comments that have been submitted to date.  Patent Docs will provide a report on that session in our "Docs @ BIO" series, which continues next week.

For additional information regarding this topic, please see:

• "BIO International Convention 2014 Preview -- Part II," June 22, 2014
• "Guest Post: USPTO Public Forum on Patent Guidance: My Thoughts as a Speaker and Attendee," June 11, 2014
• "Guest Post: Myriad -- An Obvious and Patent-Friendly Interpretation," June 4, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part IV," May 22, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part III," May 15, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part II," May 14, 2014
• "Guest Post: How to Patent Grapefruit Juice -- The New USPTO Guidance for Patent Eligible Subject Matter Is Both Sticky and Sour," May 13, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part I," May 11, 2014
• "USPTO Tries to Address Public Misunderstandings Regarding Myriad-Mayo Guidance," April 16, 2014
• "Thoughts on the USPTO's Patent Eligibility Guidelines (and What to Do About Them)," March 18, 2014
• "USPTO Issues Guidance for Analyzing Subject Matter Eligibility of Claims Reciting Laws of Nature/Natural Principles, Natural Phenomena or Natural Products," March 4, 2014

Comments

[Gallagher Intellectual Property Law]

They need to define what an "abstract idea" is. This can be done based on SCOTUS precedent going back to Gottschalk v. Benson. An "abstract idea" has been defined as: laws of nature, a broad claim to a mathematical formula (though a novel method is not disqualified merely because it includes of a mathematical formula), and prior art methods that are not made novel merely because they are implemented with a computer (though implementing a novel method with a computer does not disqualify it).

[Derek Freyberg]

Michelle Lee spoke at Stanford on Thursday, title "Speaking Truth to Patents: the Case for a Better Patent System". Nothing of substance - I was disappointed.

[Skeptical]

Derek,

Perhaps she should have listed the aid of the master of truthiness, instead....?

Alas, perhaps Mr. Colbert would have ended up skewering the wonderful Miss Lee and the lack of an appointed and vetted leader. After all, how many hundreds of days DOES it take to get to the center of a lollipop?

[Skeptical]

The "and prior art methods that are not made novel merely because they are implemented with a computer" is clearly a bastardization of the law and is not a proper 101 argument.

Maybe that's why the Court refused to give a definition.