In March, the US Supreme Court issued a ruling limiting the scope of patentable subject matter for inventions relating to laws of nature. Since then, the United States Patent and Trademark Office has been evaluating the decision so that patent examiners can follow uniform guidelines. A recent USPTO memo to patent examiners provides a three question analysis for examiners to determine whether a claim is patentable. First, an examiner determines whether the claim covers a process. Next, the examiner determines whether the claim is directed to a law of nature or natural phenomenon. If the answer to either of these questions is "no," then Prometheus does not apply. If the answer to both questions is "yes," the examiner considers in the third step whether the claim covers more than just the law of nature itself and whether the natural phenomenon is integrated into the claim. This USPTO memo should dictate how biotech and other patent applications are hereinafter prosecuted, at least until resolution of further court cases that were directly impacted by the Prometheus decision.
This guidance from the USPTO further highlights the importance of working with inventors and counsel to carefully craft claims to make the best case for patentable subject matter in the USPTO.