The United States Patent and Trademark Office updated its examiner guidelines on the subject of patent eligibility in July, the fourth such update in the last couple of years. While the courts have been more aggressively applying Section 101, commentators see the latest guidelines as moderating the PTO’s position somewhat when it comes to issuance. We asked Mintz, Levin, Cohn, Ferris, Glovsky and Popeo’s Kenneth Jenkins to explain the PTO’s latest thinking on decisions such as Mayo Collaborative Services v. Prometheus Laboratories, Association of Molecular Pathology v. Myriad Genetics and Alice v. CLS Bank. Jenkins has helped obtain patents for the likes of City of Hope, University of California and regenerative medicine company ViaCyte, but said the views expressed here are his own.
What is the problem that the guidelines are designed to solve? The basic goal is to inform and train the patent examiners with regard to some of the new case law that’s come out in the patent eligibility area. The second is to provide practitioners and the public a chance to read and analyze and evaluate the office’s position on those cases.
