USPTO Guidance for Determining Subject Matter Eligibility In View of U.S. Supreme Court’s Mayo and Myriad Decisions (Live MBHB Webinar)

On March 4, 2014, the United States Patent and Trademark Office (“USPTO”) published a guidance memorandum entitled, Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (Guidance). The Guidance seeks to implement a new examination procedure to address changes in the law relating to subject matter eligibility under 35 U.S.C. § 101 in view of the Supreme Court’s decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. Since the Guidance was issued, the USPTO has invited the public to submit comments regarding the interpretation of relevant Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analyses during patent examination of claims reciting or involving laws of nature, natural phenomena, and natural products. The USPTO has also suggested that supplemental Guidance may be forthcoming. This webinar will address the following issues as it relates to the Guidance:

  • Background

    • Synopsis of decisions
    • In depth look at the Guidance

  • Response from shareholders and USPTO response

    • Objections from shareholders at May 9th forum
    • Objections at BIO IPCC and BIO Convention

  • Summary of select shareholder submissions to USPTO
  • Likely outcomes and changes
  • How to obtain useful claims under any version of the Guidance
  • Other routes for change

    • Legislation
    • Judicial – Ariosa v. Sequenom case, others?

  • Summary and conclusions


Access an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording. 

All registrants will receive an email confirmation and details for online participation. MCLE credit is pending for the states of California, Illinois, New Jersey,* New York,* North Carolina and Virginia (*via reciprocity).

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.