Patents Post-Grant: USPTO Provides Feedback on Prometheus Issues

Patents Post-Grant: USPTO Provides Feedback on Prometheus Issues

Examination Guidelines & Reexamination Determination Issued

Last week, the USPTO issued examination guidelines in light of the ruling in Mayo v. Prometheus [enhanced version available to lexis.com subscribersthis past March. The guidelines are entitled "2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature. " (here) The notice explains that the new guidelines will primarily apply to Art Unit 1600, and supersede the initial memo issued by the USPTO to the Examining Corps. on March 21, 2012.

As a reminder, this notice is directed to patent examination, not reexamination. Patentable subject matter issues may not serve as a basis for patent reexamination. There is currently no vehicle (at least until September 16, 2012) for a patent challenger to pursue 101 arguments before the USPTO. This is because patent reexamination is initially limited to patents and printed publications only. As discussed this past May, submitting such challenges in patent reexamination is often litigation inspired, but not without risk of collateral damage to other arguments.  In the request filed last May, all of the proposed SNQs pertaining to the intervening art theory were denied, even those that did not rely upon the 101 theory. In a simple dismissal of the 10 page effort of the Request, the Office explained:

90012276

Fortunately for the Requester, SNQs that did include intervening prior art were accepted by the Office. Order in 90/011,276 (here)

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