How to Claim Something When the Inventive Aspect is a Natural Law

19 Wake Forest J. Bus. & Intell. Prop. L. 2

NAVIGATING THE EVER - CHANGING LAW OF PATENT ELIGIBILITY PRESENTS NUMEROUS PITFALLS . RECENTLY , THE FEDERAL CIRCUIT MADE A SURPRISE MOVE BY HOLDING THAT PATENT CLAIMS FEATURING A NOVEL DIAGNOSTIC DISCOVERY WERE NOT DIRECTED TO A NATURAL LAW EVEN THOUGH THE NATURAL LAW AT ISSUE WAS PLAINLY THE ONLY INVENTIVE ASPECT OF THE CLAIMS . THIS PRESENTS OPPORTUNITIES FOR PATENT PRACTITIONERS . THE PATENT OFFICE HAS INSTRUCTED EXAMINERS TO IGNORE WHETHER METHOD OF TREATMENT CLAIMS THAT PRACTICALLY APPLY NATURAL RELATIONSHIPS INCLUDE ROUTINE OR CONVENTIONAL STEPS . THUS , PATENT CLAIMS THAT COVER NEWLY DISCOVERED NATURAL PRINCIPLES CAN BE GARNISHED INTO PATENT ELIGIBILITY WITHOUT HAVING TO UNDERGO THE USUAL FULL INVENTIVENESS INQUIRY IF THEY ARE DRAFTED CAREFULLY.