Legislation Update

• Publication year: 2015
• Author: BEN BORSON Borson Law Group

Legislation Update

BEN BORSON Borson Law Group

MARK LEONARD Davis & Leonard, LLP

9 JANUARY 2015

FEDERAL LEGISLATION

The new Congress is likely to take up bills to address some of the IP issues left over from the last Congress. As those initiatives are made available, we will provide updated information.

USPTO INITIATIVES

Revised Section 101 Guidance in view of Alice v. CLS Bank

On December 10, 2014, the USPTO released "interim Guidance on Patent Subject Matter Eligibility" in view of the Supreme Court Decision in Alice Corporation Pty v. CLS Bank International, Mayo v. Prometheus, and AMP v. Myriad Genetics. Below is the Author's summary of the key points of the interim Guidance.

As reported in the Legislation IG's prior submission in October, the USPTO, the "Alice/Mayo/Myriad" initial guidance set forth a structure for analyzing subject matter eligibility. This report will reproduce only portions of the Guidance that have been updated. The updated information was collected by the USPTO in response to its request for comments from stakeholders. Additionally, this report addresses some recent decisions by the Federal Circuit that are relevant to subject matter eligibility.

Framework for Analysis of Subject Matter Eligibility

The USPTO uses the same framework for determining patent eligibility as in the Alice/Mayo/Myriad guidance discussed on our prior Report. The USPTO acknowledged that the guidance document "does not represent substantive law."

The USPTO would raise questions about claims "drawn to" the following "laws of nature."

• isolated DNA (Myriad)
• Consequence of metabolism of a drug in the body (Mayo)
• Electromagnetism to transmit signals (Morse)
• Chemical principles (Tilghman)

The interim Guidance focuses on the "different characteristic" of the invention compared to the "natural law" instead of focusing on "different structure" as in previous guidance. "Markedly different characteristics can be expressed as the product's structure, function, and/or other properties." "When the nature-based product is produced by combining multiple components, the markedly different characteristics analysis should be applied to the resultant nature-based combination rather than its component parts." Examples of characteristics to be considered include:

• Biological or pharmacological functions or activities
• Chemical and physical properties
• Phenotype, including functions and structural characteristics
• Structure and form, whether chemical, genetic or physical

The PTO would also raise questions about claims "drawn to" the following Abstract ideas.

• Mitigating settlement risk (Alice)
• Hedging (Bilski)
• Creating a contractual relationship (BuySAFE)
• Using advertising in exchange for currency (Ultramercial)
• Processing information through a clearinghouse (Dealertrack)
• Comparing new and stored information using rules to identify options (SmartGene)
• Using categories to organize, store and transmit information (Cyberfone)
• Organizing information through mathematical correlations (Digitech)
• Managing games for bingo (Planet Bingo)
• The Arrhenius equation for curing rubber (Diehr)
• A formula for updating alarm limits (Flook)
• A mathematical formula relating to standing wave phenomena (Mackay Radio)
• A mathematical procedure for converting one form of numerical representation to another (Benson)

The Prima Facie Case for Ineligibility

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