U.S. Patent Office Issues Guidance to Examiners on Supreme Court's Myriad Decision

Today the USPTO issued guidance (PTO_Myriad_Guidelines) to Examiners on how to apply the Myriad Supreme Court decision to applications under examination. The guidance states that claims drawn “solely to naturally occurring nucleotide sequences or fragments” should be rejected for lack of eligibility under 35 U.S.C. 101. The guidance indicates that this is only a preliminary guidance memo, and that a more detailed guidance document will be issued to examiners in the future.

As noted in our earlier post, the Myriad decision has left plenty of room for nanotech patents, despite the finding that naturally occurring genes are unpatentable. The USPTO’s preliminary guidance appears in line with the decision and does not alter that general view.

Supreme Court Decides Myriad Case: Synthetic DNA Held Patentable & Implications for Nanotech

Today the Supreme Court rendered its decision in the landmark Myriad case, holding that naturally occurring DNA segments are not patentable, but synthetic DNA segments are patent eligible based on the patent eligibility requirement of 35 U.S.C. 101 which prevents patents on products of nature. It is important to further recognize that methods of using naturally occurring DNA or non-natural methods of producing natural DNA are still patent-eligible.

The full implications of this decision will take years to determine, as lower courts are confronted with variations of the fact patterns in future cases and render new decisions and importantly, as the Patent Office issues guidance and interprets how Myriad will be applied during examination of patent applications. Stay tuned as more guidance becomes available.

For now, while the Myriad case may cast doubt on a very small subset of nanotech patent claims, the commercially most important areas have likely been preserved as patent eligible. In most cases, a pure naturally occurring nanotech material is not claimed alone in a form isolated from nature. To the contrary, it may be claimed as a method of producing large quantities of the natural nanomaterial or as a method of using it or as a combination product where the natural nanomaterial is combined with other non-natural components to produce, for example, a semiconductor device. These types of claims are unlikely to be impacted by the Myriad decision, so we can expect limited impact on nanotech.

U.S. Patent "Micro-Entity" Rules & Other Cost Savings Strategies: Do You Qualify for 75% off your U.S. Patent Filing Costs?

The short answer is that a company or individual who already is qualified as a small entity (which entitles you to 50% off U.S. patent filing costs) may also qualify under the final rules issued by the Patent Office for micro-entity status (entitling you to 75% off U.S. patent filing costs) when (a) that entity has filed no more than 4 prior non-provisional U.S. patent applications, (b) that entity has not had an income in the last year greater than $150,162 (this number changes based on median U.S. household income), and (c) the invention in question has not been licensed to a non-micro-entity.

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Foley & Lardner LLP Launches Legal Innovation Hub for NextGen Manufacturers

Our firm recently launched its Legal Innovation HubSM for NextGen Manufacturers, a major firm-wide initiative to provide access to customized service for companies operating in this area. Nanotechnology is a major contributor to the next-generation manufacturing revolution. The bottom-up approach of assembling products molecule by molecule has fueled fundamentally new ways of manufacturing such as 3-D printing and biomimetic techniques (see last week’s post on Angela Belcher’s use of bio-engineered viruses that produce components for the electronics industry) that are not only cleaner and greener, but also may yield entirely new materials and products that can’t be produced by traditional manufacturing. To maximize commercial success for next-generation manufacturing, a diverse array of services may be needed, whether it is capitalizing on cleantech tax credits or devising the right IP strategy. The Legal Innovation HubSM offers a gateway to next-generation manufacturing to identify which legal services may be relevant in this rapidly evolving business environment.

2013 Lemelson-MIT Prize Awarded to Nanotech Scientist Angela Belcher

This year’s Lemelson-MIT Prize, which rewards inventors who improve the world through technological invention, has gone to pioneering nanotech scientist Angela Belcher. Dr. Belcher was inspired during her graduate work by the abalone, which is able to manufacture an incredibly hard shell by directing the organization of inorganic materials using its biological machinery. Following her studies on how the abalone accomplishes this process, she realized that other organisms and biological materials could be “evolved” to manufacture components for electronics and solar cells. Based on these inventions, Dr. Belcher has co-founded two companies, Cambrios Technologies (involved in producing transparent coatings and electronics) and Siluria Technologies (relating to nanowire catalysts that convert natural gas to plastics, fuel, and chemicals). She intends to use some of the Lemelson-MIT Prize funds on programs designed to get children more interested in science and technology at an early age. She is named as an inventor on a number of US patents.