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« PTAB Denies Inter Partes Review Petitions Against Two Acorda Patents | Main | Views from the Director's Office on Post-Grant Reviews by the PTAB »

August 25, 2015


"This process could be faulted as being more than a little inexact. Ultimately, however, the finger must be pointed back to the Supreme Court."


Completely agree. The Royal Nine has completely mucked up the patent-eligibility standard, yet refuses to bring clarity, accept blame for having done so, and simply beats down the Federal Circuit for having tried its best to render order out of the chaos the Royal Nine has created. The USPTO has obviously picked up on the chaos caused to create their own regime for patent-eligibility, almost daring the Federal Circuit to challenge it and get beaten down again by the Royal Nine. And people wonder why the patent bar is so upset with Our Judicial Mount Olympus? How about also pitying our poor clients who have to make significant financial decisions about what to innovate and how to protect it in such a chaotic patent law universe. It's truly "Alice in Patentland" now (pun absolutely intended).

I'm curious how much longer we'll have to wait for the Office to provide some examples of their analysis as applied to claims seeking protection for diagnostic or prognostic methods. Are they waiting for the Ariosa v. Sequenom case to reach a final judgment? This is a significant omission, especially given the role that such claims have played in the SCOTUS jurisprudence that started this whole mess.

I think the Office is waiting until they have some definitive statement, most likely by the Supreme Court, before they give any firm guidance on such claims. Until then, we wait.


I would not be surprised if the USPTO is indeed waiting until Ariosa v. Sequenom case reaches a final judgment.

I think the USPTO realizes that if they had to provide a rule now it would be that diagnostic methods are per se patent ineligible based on Mayo and the fact that so far the Federal Circuit has yet to find a diagnostic method claim patent eligible post-Mayo.

I would guess that USPTO realizes the many problems that would be created by providing such as official rule and is hoping that the Federal Circuit or Supreme Court will provide the USPTO at least some wiggle room to avoid having to officially state that diagnostic method claims are no longer patent eligible.

I see a lot of wax...

Hey Skeptical,

LOL! In certain organization' ears, or more likely, the "twisting" thereof like a "nose" of it?

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