Just over three years ago, the United States Supreme Court issued its decision in Bilski v. Kappos. The critical question presented to the Court for consideration was whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter. The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, but is an important clue, thereby overruling the Federal Circuit who had earlier ruled that the machine or transformation test was the test to determine whether an invention is patentable subject matter.
But what practical effect has the Supreme Court ruling in Bilski v. Kappos had? Truthfully, not much. at least in terms of the day-to-day approach of patent attorneys and the U.S. Patent and Trademark Office. (Certainly, the decision was important in that it preserved the patentability of at least some business methods and preserved the patentability of software.)
While the machine-or-transformation test is now only an important clue, it really has become a safe harbor for practitioners. The assumption has been that you satisfy the machine-or-transformation test announced by the Federal Circuit and you have a patentable invention. Fail to satisfy the machine-or-transformation test and you may have a patentable invention, but neither the Patent Office nor any court has yet found an invention that failed the machine-or-transformation test to be patentable.
In the spirit of expressing gratitude this Thanksgiving holiday, Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, shares the newest law for which the USPTO is thankful. On November 18, 2011, President Obama signed into law H.R. 2112, the Consolidated and Further Continuing Appropriations Act. This bill provides the USPTO with official spending authority through the end of September 2012 (the end of the fiscal year) and the ability to spend up to $2.7 billion dollars. According to Scott’s post, (more…)
PGR Window Anomaly to Encourage Early Litigation?
Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA). Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.
As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).
When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR, becomes available for all patents next September 16, 2012. (more…)
Ryan Chirnomas, Partner in the Biotechnology group at Westerman, Hattori, Daniels and Adrian, sent in this article discussing the Court of Appeals for the Federal Circuit’s recent Classen v. Biogen decision. He highlights the key points of the decision and why he believes this case is a missed opportunity to clarify the machine-or-transformation test of Bilski.
Not long after issuing opinions in AMP v. USPTO and Prometheus v. Mayo, the CAFC has again taken on the difficult questions of patent eligible subject matter in Classen v. Biogen. In 2008, the CAFC issued a three-sentence non-precedential opinion holding that Classen’s claims do not recite patent eligible subject matter. This decision was appealed to the Supreme Court and subsequently remanded to the CAFC after the Supreme Court’s Bilski decision. The instant decision includes a discussion of patent-eligible subject matter, as well as the safe harbor exception to infringement of pharmaceutical patents. This discussion is limited to questions of patent eligible subject matter. This decision relates to three patents: U.S. Patent Nos. 6,638,739 (“the ‘739 patent”), 6,420,139 (“the ‘139 patent”) and 5,723,283 (“the ‘283 patent”). (more…)
Our friends at Foley & Lardner sent in this article discussing the Federal Circuit’s decision in Classen Immunotherapies, Inc. v. Biogen Idec.
On August 31, 2011, the Federal Circuit issued its second decision in Classen Immunotherapies, Inc. v. Biogen Idec (App. 2006-1643, -1649), on remand from the Supreme Court after Bilski v. Kappos (U.S. 2010). The Federal Circuit first decided Classen’s appeal in 2008, when a panel comprised of Circuit Judges Newman and Moore and District Judge Farnan (sitting by designation) held in a one-paragraph, non-precedential decision authored by Judge Moore that Classen’s claims do not satisfy 35 USC § 101. The second time around, the Federal Circuit (by a panel that included Chief Judge Rader in place of Judge Farnan) took a closer look at Classen’s claims, and determined that two of the three Classen patents at issue indeed are directed to subject matter that is patent-eligible under 35 USC § 101. In this decision, the Federal Circuit has provided useful guidance for method claims that involve some type of information gathering. It appears that if the claims recite a step of “putting this knowledge to practical use,” such as an active treatment step based on the information, they are likely to be patent-eligible under 35 USC § 101. On the other hand, if the claimed methods culminate in obtaining information, and nothing more, they may be vulnerable to challenge under 35 USC § 101.
Judge Newman wrote the opinion for the court, which was joined by Chief Judge Rader. Chief Judge Rader wrote a separate opinion to express “additional views,” which was joined by Judge Newman. Judge Moore wrote a dissenting opinion. (more…)