When should the markedly different characteristics analysis be performed?

The markedly different characteristics analysis should be performed when evaluating nature-based product limitations in a claim. However, it’s important to note that not all claims containing nature-based products require this analysis.

According to the MPEP, “Examiners should keep in mind that if the nature-based product limitation is naturally occurring, there is no need to perform the markedly different characteristics analysis because the limitation is by definition directed to a naturally occurring product and thus falls under the product of nature exception.“

The analysis should be applied in the following situations:

• When the claim is to a nature-based product by itself (e.g., “a Lactobacillus bacterium”)
• When the claim is to a nature-based product produced by combining multiple components
• When the claim is to a nature-based product in combination with non-nature based elements
• For product-by-process claims involving nature-based products
• For certain process claims that are essentially no different from a product claim

It’s important to apply the analysis only to the nature-based product limitations in the claim, not to the entire claim if it includes other non-nature-based elements.

To learn more:

• markedly different characteristics analysis
• nature-based products
• patent claims
• patent eligibility