After a relatively long break of over a year from issuing subject matter eligibility memos after Amdocs, the USPTO looks like it’s back on track. This year has already seen the Berkheimer memo. Now its latest memo from Bob Bahr was issued yesterday June 7, 2018 in light of Vanda Pharms. v. West-Ward Pharms (Fed. Cir. Apt. 13, 2018).
The memo includes guidance to examiners for examining diagnostics applications under Section 101. The memo is nothing revolutionary for examining under the Mayo/Alice framework as it closely follows the Vanda holding. But the memo does clarify that examiners should consider an “application” of a natural relationship as satisfying step 2A of the Alice test, without having to go to the “routine, conventional, and well-known” analysis of Step 2B. Specifically, the memo states that practically applying a natural relationship should be considered eligible–it is not necessary for such method of treatment claims to include non-routine or unconventional steps.
The recent memos offer some hope that USPTO will continue to improve the predictability of applying Section 101 rejections.