IP Update, Vol. 12, No. 1

Editor: Marc S. Weiner, Esq.

Patent Prosecution Highway (PPH) Gone Global

The USPTO has launched new PPH pilot programs which simplify the entire PPH program for nearly all current PPH users. The new PPH pilot programs are called Global PPH (GPPH) and IP5 PPH. GPPH and IP5 PPH pilot programs have replaced existing PPH programs for the offices that have chosen to participate in these new programs. The aim of Global PPH (GPPH) and IP5 PPH programs is to further simply requirements consistent across the participating offices.

There are currently 17 offices involved in the Global PPH pilot program: IP Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), National Board of Patents and Registration of Finland (NBPR), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (UKIPO), and United States Patent and Trademark Office (USPTO). Additionally, there are currently 5 offices involved in the IP5 PPH pilot program: JPO, KIPO, USPTO, European Patent Office (EPO), and State Intellectual Property Office of the People’s Republic of China (SIPO). Accordingly, it should be noted that JPO, KIPO, and USPTO are participating in both GPPH and IP5 programs.

Based on these new PPH pilot programs, USPTO applicants can make a request for accelerated examination based on any earlier, positive result (whether PCT or national work product) from any of the participating offices. Furthermore, because the USPTO is participating in both the GPPH and IP5 programs and requirements for both programs are equivalent, USPTO applicants would not need to specify which PPH pilot program is being utilized. USPTO applicants may find the new PPH request form from the USPTO website at http://www.uspto.gov/forms/sb0020glbl.pdf.

The GPPH and IP5 PPH pilot programs commenced on January 6, 2014. The GPPH program is set to run for a period of one year (ending on January 5, 2015). The IP5 PPH program is set to run for a period of three years (ending on January 5, 2017). However, the periods for each program may be extended.

For more information on the Global PPH (GPPH) pilot program and the IP5 PPH pilot program, please visit http://www.uspto.gov/patents/init_events/pph/index.jsp.

Summary provided by Aslan Ettehadieh.

USPTO Issues Guidance for Analyzing Claims

Following the Supreme Court Myriad and Prometheus Decisions

Background

In 2012 the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc. found some method of treatment patent claims invalid as being directed to a “law of nature”. Then in 2013 the Supreme Court in Association for Molecular Pathology v. Myriad Genetics found some DNA patent claims invalid as being directed to a “product of nature”. After each decision, the USPTO issued a short memorandum to the Examiners for initial guidance but has been working on more detailed guidelines. Those guidance materials were issued on 4 March 2014 as “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products”.

Summary of Guidance Materials

The materials are divided into four sections:

Part I – discussing the overall process for analyzing subject matter eligibility;

Part II – explaining how to determine whether the claim as a whole recites eligible subject matter (something significantly different than a judicial exception);

Part III – providing multiple examples; and

Part IV – providing a new form paragraph to be used when rejecting claims in accordance with this guidance.

Patent practitioners had been wondering whether the USPTO would apply the principles of the Myriad decision to subject matter other than DNA sequence claims, such as to isolated and purified proteins or other biologically active molecules.

The Guidance Materials specifically address several subject matters other than DNA sequences. In fact, most of the materials relate to non-DNA sequence inventions.

The Guidance Materials set forth three questions to be asked in determining whether or not a claim is drawn to patent-eligible subject matter:

Question 1: Is the claimed invention directed to one of the four statutory patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?

Question 2: Does the claim recite or involve one or more judicial exceptions?

Question 3: Does the claim as a whole recite something significantly different than the judicial exception(s)?

The key issue will often be the determination under Question 3 of whether the claim (“as a whole”) recites something significantly different than a law of nature or natural product. For making that determination, the USPTO has set forth the following factors to be considered:

Factors that weigh toward eligibility (significantly different):

a) Claim is a product claim reciting something that initially appears to be a natural product, but after analysis is determined to be non-naturally occurring and markedly different in structure from naturally occurring products.

b) Claim recites elements/steps in addition to the judicial exception(s) that impose meaningful limits on claim scope, i.e., the elements/steps narrow the scope of the claim so that others are not substantially foreclosed from using the judicial exception(s).

c) Claim recites elements/steps in addition to the judicial exception(s) that relate to the judicial exception in a significant way, i.e., the elements/steps are more than nominally, insignificantly, or tangentially related to the judicial exception(s).

d) Claim recites elements/steps in addition to the judicial exception(s) that do more than describe the judicial exception(s) with general instructions to apply or use the judicial exception(s).

e) Claim recites elements/steps in addition to the judicial exception(s) that include a particular machine or transformation of a particular article, where the particular machine/transformation implements one or more judicial exception(s) or integrates the judicial exception(s) into a particular practical application. (See MPEP 2106(II) (B) (1) for an explanation of the machine or transformation factors).

f) Claim recites one or more elements/steps in addition to the judicial exception(s) that add a feature that is more than well-understood, purely conventional or routine in the relevant field.

Factors that weigh against eligibility (not significantly different):

g) Claim is a product claim reciting something that appears to be a natural product that is not markedly different in structure from naturally occurring products.

h) Claim recites elements/steps in addition to the judicial exception(s) at a high level of generality such that substantially all practical applications of the judicial exception(s) are covered.

i) Claim recites elements/steps in addition to the judicial exception(s) that must be used/taken by others to apply the judicial exception(s).

j) Claim recites elements/steps in addition to the judicial exception(s) that are well-understood, purely conventional or routine in the relevant field.

k) Claim recites elements/steps in addition to the judicial exception(s) that are insignificant extra-solution activity, e.g., are merely appended to the judicial exception(s).

l) Claim recites elements/steps in addition to the judicial exception(s) that amount to nothing more than a mere field of use.

The materials then provide a number of instructive examples with hypothetical claims and an explanation of the appropriate analysis and conclusion for each example.

The full text of the Guidance Materials can be found on the USPTO web site at http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf and a quick reference sheet can be found at http://www.uspto.gov/patents/law/exam/myriad-mayo_qrs.pdf

Summary provided by Leonard R. Svensson