C21CM Supplemental Comments on the USPTO Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, and Natural Products

We greatly appreciate the USPTO’s outreach to the patent user community in its efforts to revise and improve its March 4, 2014 examination guidance for the determination of subject matter eligibility of claims relating to products and processes derived from natural sources or materials (the “March Guidance”). After the USPTO’s extended public comment period ended on July 31, USPTO staff participated in a number of public events and laid out a range of concepts that appear to be under ongoing consideration for revising the March Guidance. In particular, USPTO staff indicated that upcoming revisions of the Guidance may incorporate the following general changes:

  • A 101 analysis may be limited to claims “directed to” (rather than merely “reciting” or “incorporating”) a judicial exclusion, thereby narrowing the range of claims that would be funneled into this process to only those that really need to undergo 101 analysis.
  • The USPTO may consider evidence of “function,” or “functional differences” — rather than always requiring structural modifications, as is currently the case — in distinguishing patent-eligible inventions from patent-ineligible natural phenomena/products of nature.
  • Revisions may be built around a “unified 101 analytical framework,” with particular reference to the Supreme Court’s CLS Bank decision, that would apply to both process claims on the one hand, and claims to compositions, machines, and manufactured articles on the other hand.

Read the complete comments.