The United States Patent and Trademark Office published a new, revised Guidance today on patent subject-matter eligibility. This new memorandum is in direct response to criticism received by the PTO from its publication of a previous guidance which had sought to address patent eligibility issues raised by the Myriad and Mayo decisions. The latest revision not only seeks to address the criticisms of the previous Guidance, which dealt primarily with patents in the life sciences, but also includes guidelines on patent eligibility for software and business method patents as set forth in the Supreme Court’s recent Alice Corp. decision. The PTO has also announced that another public forum to discuss this Guidance will be held on January 21, 2015. In concert with that public forum, a 90 day comment period will be open soon after the Guidance is recorded in the Federal Register.
Dr. Anthony Sabatelli, Partner at Dilworth IP, had testified before the PTO in May of this year about concerns with the previous Guidance. His reflections on that testimony can be found here. He will be providing his analysis and comments about this new document in the coming days.
A copy of the revised Guidance can be found here.