By Jason Rantanen
Within hours of the Court's Association for Molecular Pathology v. Myriad Genetics, Inc. decision yesterday, the USPTO published its preliminary guidance to the Patent Examining Corps relating to nucleic acid-related technology. From the memorandum:
As of today, naturally occurring nucleic acids are not patent eligible merely because they have been isolated. Examiners should now reject product claims drawn solely to naturally occuning nucleic acids or fragments thereof, whether isolated or not, as being ineligible subject matter under 35 U.S.C. § 101. Claims clearly limited to non-naturally-occurring nucleic acids, such as a cDNA or a nucleic acid in which the order of the naturallyoccuning nucleotides has been altered (e.g., a man-made variant sequence), remain eligible. Other claims, including method claims, that involve naturally occurring nucleic acids may give rise to eligibility issues and should be examined under the existing guidance in MPEP 2106, Patent Subject Matter Eligibility.
Read the entire memorandum (it's short) here: Download Myriad_20130613