The U.S.P.T.O. recently issued guidelines on how its examiners should analyze inventions’ patent-eligibility under 35 U.S.C. § 101 in accordance with developing Supreme Court jurisprudence, as reported here . Subsequently, the Office provided further training to its examiners in a powder keg of a slideshow instructing them how to apply the guidelines. The slideshow states that the “Supreme Court has made it clear that ‘natural products’ include a wide variety of things.” Because an invention that is not “significantly different” from a natural product is not eligible for patenting under the guidelines, the U.S.P.T.O.’s broad conception of what constitutes a “natural product” may lead to rejections for failure to satisfy § 101 for man-made inventions heretofore considered patent-eligible.

The slideshow instructs examiners to give a claim its broadest reasonable interpretation in determining whether a claimed invention falls within a judicial exception to patent-eligibility. If any embodiment falling within that broadest reasonable interpretation “may” be characterized as a natural product, or other judicial exception such as a natural phenomenon or law of nature, then the claim must also recite enough additional, eligible subject matter in order to bring it out of the exception and satisfy the requirements of § 101.

As an example, the slideshow describes different types of materials that would be encompassed by a claim reciting the term “gunpowder” given its broadest reasonable interpretation. One type, a “mixture of three naturally occurring materials: potassium nitrate, sulfur and charcoal” is deemed, surprisingly, “not markedly different [from a product of nature] because none of the components have been changed” from how they exist naturally. Because the broadest reasonable interpretation of the claim would include this type of material, the claim would invoke a judicial exception, even though it would also cover other types of gunpowder that are “markedly different” from natural products (e.g., a mixture of granulated potassium nitrate, sulfur and charcoal coated with graphite).

Following a similar rationale, the slideshow states that a claim reciting pomelo juice mixed with “a preservative,” given its broadest reasonable interpretation, would invoke an exception from eligibility because naturally occurring vitamin E is a preservative, even though the claim would also include artificial preservatives that are markedly different from naturally occurring chemicals. And even though pomelo juice does not naturally contain vitamin E, the slideshow states that adding vitamin E to pomelo juice does not confer any structural change on either substance, so “the claimed mixture is not markedly different from what exists in nature.” Because this embodiment is encompassed by the broadest reasonable interpretation of the claim, examiners are instructed that such a claim should be rejected as ineligible.

It is important to keep in mind that although the U.S.P.T.O. promulgated these guidelines, they are not binding on the federal courts (any more than the U.S.P.T.O.’s decades-long policy of granting claims to isolated genes was binding on the Supreme Court in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., previously reviewed here). And the Office has also invited the public to comment on its guidelines by email, at: myriad-mayo_2014@uspto.gov. Thus, these guidelines may be modified, whether to reflect subsequent court precedent or, perhaps, in response to public feedback. But for the time being, applicants should not be surprised to receive § 101 rejections for reciting patent-ineligible subject matter even if claims at issue do encompass entirely man-made compositions that are “markedly different” from anything in nature.

By Teige P. Sheehan