Patent Law Practice Center

Centocor v. Abbott Labs: When Is A Biotech Invention Complete And Ready For Filing?

The following post was written by Gerald M. Murphy, Partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

On February 23, 2011, the Court of Appeals for the Federal Circuit in Centocor v. Abbott Labs set aside a $1.7 billion jury verdict in favor of the patentee (Centocor) and held the patent claims at issue were invalid for lack of written description.  This decision reflects a trend of the Federal Circuit in recent years to invalidate patents for lack of written description and offers little guidance as to what is necessary to actually comply with the written description requirements. This case dealt with a somewhat “unpredictable” biotech invention, where there was not an actual reduction to practice of the claimed invention.  In the pharmaceutical fields, it is very common to have method claims directed to treatment of humans and it is very unusual to have had an actual reduction to practice of the method prior to filing the patent application.  However, in this case, the claims were not directed to a method of use, but rather, a new product (antibody).  Based on this and other cases, it appears that the trend of finding lack of written description may become more common in so-called “predictable technologies.” (more…)

Goeddel V. Sugano: What’s The Difference Between “Envisioning” An Invention And Being “In Possession” Of The Invention?

The following post was written by Gerald M. Murphy, partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

In Goeddel v. Sugano, the Court of Appeals for the Federal Circuit (CAFC) has provided more guidance as to what is necessary for a sufficient “written description” of an invention, this time for a true “biotech” invention, in the context of a motion for benefit of priority in an interference.  This case involved two interferences; one directed to DNA encoding human fibroblast interferon (hFIF) unaccompanied by a hFIF presequence (mature hFIF) and one directed to a composition comprising  non-glycosylated hFIF.  Sugano filed a motion for benefit of its Japanese priority application (Sugano priority application) and was granted priority by the Board of Patent Appeals and Interferences (the Board) in both interferences.  Goeddel appealed that decision on the grounds that the Sugano priority application did not constitute a constructive reduction to practice because it did not enable the Counts and did not provide a sufficient written description of the Counts.  The Federal Circuit reversed on the ground that the Sugano priority application did not provide a sufficient written description of the Count because the inventors were not “in possession” of the invention. (more…)

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences. (more…)