Memorandum to Patent Examining Corps, Deputy Commissioner for Patent Examination Policy, United States Patent and Trademark Office, June 7, 2018
The USPTO has released a guidance memorandum to patent examiners regarding the Federal Circuit’s recent decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Cir. 2018). The memo “addresses the limited question of how to evaluate the patent eligibility of ‘method of treatment claims’ in light of the Federal Circuit decision in Vanda.” Memorandum at 3.
The guidance emphasizes three “important points” from the Vanda opinion. First, that the Federal Circuit examined the claims as a whole. Second, that the method of treatment claims at issue “applied” a natural relationship, rather than being “directed to” one. And third, that “the Federal Circuit did not consider whether or not the treatment steps were routine or conventional when making its ‘directed to’ determination.” Memorandum at 2 (emphasis in original).
Applying this holding to specific steps in the examination process, the memo emphasizes that (1) “‘method of treatment’ claims that practically apply natural relationships should be considered patent eligible” under the current USPTO subject eligibility guidance, and (2) “it is not necessary for ‘method of treatment’ claims that practically apply natural relationships to include nonroutine or unconventional steps to be considered patent eligible.” Memorandum at 2-3 (emphasis in original).