As we previously reported, on March 4, the US Patent and Trademark Office released new guidelines for patent examiners on whether patent claims based on products of nature, natural laws, and natural phenomena may be allowed.
Now the USPTO has released the actual training slides online.
The slides illustrate how the guidelines will be applied in practice.
Whether a claim will be accepted or rejected depends on three questions:
- Is the claim directed to one of the four statutory categories, i.e., a process, machine, manufacture, or composition of matter? (If no, then the claim is rejected. If yes, then proceed to question 2.)
- Does the claim recite or involve judicial exceptions, including exceptions for abstract ideas, laws of nature/natural principles, natural phenomena, and natural products? (If no, then claim qualifies. If maybe or yes, then proceed to question 3.)
- Does the claim as a whole recite something significantly different than the judicial exceptions? (If no, then the claim is rejected. If yes, then the claim qualifies.)
The first example in the slides relates to pomelo juice.
The claim is for a beverage composition comprising: a) pomelo juice; and b) a preservative.
According to the slide, the answer to question 1 is yes, because the claim is directed to a statutory category (a composition of matter).
The answer to question 2 is yes, because the claim recites a natural product (fruit juice).
To answer question 3 the examiner would need to analyze the claim to determine if it qualifies as eligible – is it significantly different from the natural product?
The examiner is to give the claim its broadest reasonable interpretation (BRI) in light of the specification.
Based on the ordinary meaning of “preservative,” the BRI encompasses both:
- Natural preservatives such as vitamin E, and
- Non-natural preservatives such as (the fictional) preservative X.
Thus, the BRI encompasses at least two embodiments:
- Pomelo juice with vitamin E, and
- Pomelo juice with preservative X.
If either of these embodiments is ineligible, then the claim is ineligible.
An examiner is then to consider factors weighing toward and against eligibility based on whether something is “significantly different” from a natural product.
According to the example, the pomelo juice is not eligible because:
- The pomelo juice and vitamin E are naturally occurring.
- The BRI of the “composition” of juice and vitamin E encompasses embodiments in which neither component is changed, e.g., the two components do not chemically react with each other or otherwise combine together in a particular way that creates a structural difference from what exists in nature.
- The claimed mixture is not markedly different from what exists in nature.