Myriad petition highlights debate over subject-specific eligibility rules
01 October 2012
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Eileen McDermott, New York
As the Myriad plaintiffs make their second attempt at Supreme Court review, uncertainty over US patent eligibility law is causing some to wonder whether industry or subject matter-specific standards should be imposed by courts. Eileen McDermott investigates
In a recent webinar hosted by Managing IP and LexisNexis, Eric Raciti of Finnegan expressed frustration with the present situation. Raciti said that the lack of consensus on the patent eligibility standard in the courts has resulted in many USPTO examiners erring on the side of caution by reflexively issuing Section 101 rejections.
A July 3 USPTO memorandum providing interim guidance to USPTO examiners after the Mayo v Prometheus case said that patents involving laws of nature must demonstrate a practical application of the law and also claim “significantly more” than a law of nature. Many examiners are having trouble interpreting this guidance.
“This is tough and slippery stuff to get your hands around,” said Raciti. “Some examiners are of the mind that [they’re] just going to put the rejection in there because then at least [they’ve] raised it and it can be...
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