How are ‘products of nature’ evaluated for patent eligibility?
Products of nature are evaluated for patent eligibility using the markedly different characteristics analysis. This analysis compares the claimed nature-based product to its naturally occurring counterpart to determine if it has markedly different characteristics. As stated in MPEP 2106.04(c): “Nature-based products, as used herein, include both eligible and ineligible products and merely refer to the…
Read MoreWhat is the ‘particular treatment or prophylaxis’ consideration in Step 2A Prong Two?
The particular treatment or prophylaxis consideration is part of Step 2A Prong Two analysis. It evaluates whether the claim applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. As stated in MPEP 2106.04(d)(2): “To qualify as a ‘treatment’ or ‘prophylaxis’ limitation for purposes of this…
Read MoreWhat are examples of ‘markedly different characteristics’ in nature-based products?
Markedly different characteristics in nature-based products can be expressed as the product’s structure, function, and/or other properties. Some examples include: Biological or pharmacological functions/activities Chemical and physical properties Phenotype, including functional and structural characteristics Structure and form, whether chemical, genetic or physical As stated in MPEP 2106.04(c): “Examples of biological or pharmacological functions or activities…
Read MoreWhat is the ‘markedly different characteristics’ analysis?
The markedly different characteristics analysis is part of Step 2A Prong One of the patent eligibility test. It is used to identify product of nature exceptions by comparing a claimed nature-based product to its naturally occurring counterpart to determine if it has markedly different characteristics. As stated in MPEP 2106.04(c): “The markedly different characteristics analysis…
Read MoreHow does the USPTO evaluate integration of a judicial exception into a practical application?
The USPTO evaluates integration of a judicial exception into a practical application in Step 2A Prong Two by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those elements to determine whether they integrate the exception into a practical application. As stated in MPEP 2106.04(d): “A claim…
Read MoreHow does the USPTO handle claims with multiple judicial exceptions?
When a claim recites multiple judicial exceptions, the USPTO recommends the following approach: If possible, treat the claim as containing a single judicial exception for efficiency. If the exceptions are distinct, select one exception for the eligibility analysis. If the exceptions are interrelated, consider the limitations together as a single abstract idea. As stated in…
Read MoreHow does the USPTO evaluate improvements to technology in Step 2A Prong Two?
In Step 2A Prong Two, the USPTO evaluates whether the claim as a whole integrates the judicial exception into a practical application, including by considering if the claimed invention improves the functioning of a computer or other technology/technical field. As stated in MPEP 2106.04(d)(1): “The specification need not explicitly set forth the improvement, but it…
Read MoreWhat is the difference between ‘directed to’ a judicial exception and ‘reciting’ a judicial exception?
There is an important distinction between a claim ‘reciting’ a judicial exception and being ‘directed to’ a judicial exception in patent eligibility analysis: ‘Reciting’ a judicial exception means the claim sets forth or describes the exception. Being ‘directed to’ a judicial exception means the exception is not integrated into a practical application. As stated in…
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