Patent Law Practice Center

Top 5 Patent Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: Federal Circuit on Software Patents: Show Me the Algorithms – This post discusses the decision by the United States Court of Appeals for the Federal Circuit in Noah Systems, Inc. v. Intuit, Inc. and how the CAFC explained  the disclosure requirements for software patents that utilize means-plus-function claim language.

2) Patents Post-Grant: Different Thresholds for New Post Grant Proceedings – This post questions whether or not there is a significant enough difference between Inter Partes Review and Post Grant Review to make an impact between grant rates. But the post does discuss the differentiating thresholds necessary for initiating the process of Inter Partes Review and Post Grant Review.

3) Patently-O: The Impact of Mayo v. Prometheus: Three Weeks In – The decisions that have been released that rely on the Supreme Court opinion in Mayo v. Prometheus are highlighted and summarized in this post.

4) Patents4life: Aventis v. Hospira – How to Meet the Therasense Standards – This post discusses the Federal Circuit’s decision in Aventis v. Hospira, and how the inventors were found to have intentionally decided not to submit two material pieces of prior art to the PTO.

5) IP Kat: Patents and jurisdiction 2: Innovia v Frito-Lay – This post analyzes the question of which court Europeans can bring their patent related claims. The reason for this is, “because the same patents get litigated in jurisdictions outside the European Union too, and the effort of fighting to sue before the court of one’s choice often determines the outcome of the substantive proceedings too.”

Prometheus: Implications of the U.S. Supreme Court’s Decision

In a case that will have a profound effect on biotech and pharmaceutical companies, the U.S. Supreme Court on March 20, 2012 issued its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., and addressed the question as to when medical diagnostic methods fulfill the patentable subject matter requirement of Section 101 in the Patent Code.

As held by the Supreme Court, claimed processes are not patentable unless they have additional features that provide practical assurance that the processes are genuine applications of natural phenomena or laws of nature rather than correlations involving those laws. In addition, the U.S. Supreme Court clarified that the so called “machine or transformation test” articulated in Bilski v. Kappos is not a definitive test of patent eligibility.

As the U.S. Supreme Court has recently remanded Association for Molecular Pathology v. Myriad to the Federal Circuit for consideration in light the decision in Mayo v. Prometheus,  the question of when are genes and gene fragments, methods of drug screening and medical diagnosis using genetic material and information patentable subject matter will again be addressed.

For more on the matter, you should really attend PLI’s next One Hour Briefing. On Wednesday, April 4th, at 1pm, PLI is hosting a One Hour Briefing entitled, “Prometheus: Implications of the U.S. Supreme Court’s Decision.” This briefing will be conducted by Keith J. McWha, partner in the law firm Day Pitney LLP, and Paul T. Martin Associate Director Intellectual Property and Assistant General Counsel at PTC Therapeutics Inc. Specific topics include:

• What are the consequences of the Court’s ruling on the patentability of process patent claims generally?
• How might this decision affect biotech and pharmaceutical patent claims such as dosage or method of use and naturally occurring therapeutics?
• What can be done to ensure that method claims for drug screening, diagnostics and dosing satisfy the Prometheus test for patentable subject matter?

PatentDocs: USPTO Issues Guidance on Mayo v. Prometheus

We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis. Today’s post is entitled, “USPTO Issues Guidance on Mayo v. Prometheus”, and it discusses the USPTO’s memorandum regarding the Mayo v. Prometheus Supreme Court decision. According to the post, “The three-page memo, sent by Associate Commissioner for Patent Examination Policy Andrew Hirshfeld, notes that the guidance provided is preliminary and that “[a]dditional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.”

Here is an  excerpt:

One day after the Supreme Court reversed the Federal Circuit in Mayo Collaborative Services v. Prometheus Laboratories, Inc., finding Prometheus’ diagnostic method claims to be invalid for “effectively claim[ing] underlying laws of nature,” the U.S. Patent and Trademark Office issued amemorandum to its examining corps providing the Office’s preliminary guidance regarding the High Court’s decision.  The three-page memo, sent by Associate Commissioner for Patent Examination Policy Andrew Hirshfeld, notes that the guidance provided is preliminary and that “[a]dditional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.”

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Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include the anticipated revisions to the Patent Bar, a conflict of interest for U.S. Supreme Court Justice Breyer, and an update from the USPTO’s collaborations in improving the patent system via open access.

1. IP Watchdog: PTO Updates Patent Bar Exam to Test AIA & Appeal Rules – The Patent Bar will change to reflect the new rules incarnated by the America Invents Act. This post outlines what new topics will be tested and how the USPTO has established a trend in making sure the exam is as up to date as possible. The new Patent Bar exam will debut January 31, 2012. For information regarding PLI’s Patent Bar Review (Jan. 11-15, 2012), click here.

2. Peer To Patent: Improving Patent Systems through Open Access– The USPTO hosted its Second Annual Prior Art Collaboration Conference in October 2011, and this post provides the proceedings that developed during the conference. Participants such as WIPO, the European Patent Office, the U.K. Intellectual Property Office, IP Australia, the Japan Patent Office, and the Korea Intellectual Property Office discussed ways in which the patent offices and the public could work together to improve access to prior art. (more…)

Machine-Or-Transformation Test After Myriad: Implications To The Prosecution Of Process Claims

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, recently sent in this article he wrote with colleague’s Josephine Liu and Stacie Ropka discussing recent case law on the patentability of process claims.

Not all inventions are patentable.  The Federal Circuit recently handed down its decision in Myriad[i] and the Supreme Court will be hearing Prometheus[ii] in the term beginning in October 2011.  The issues in both Myriad and Prometheus highlight the difficulty in determining when a claim directed to a process is patentable subject matter under § 101, a determination that is particularly troubling in many inventions related to the life sciences.

A first step for granting a patent is determining whether or not a patent application claims patentable subject-matter.  In a line of cases from the late 70s to early 80s and reaffirmed in 2010, the Supreme Court explained that 35 U.S.C. § 101 is to be interpreted broadly and has articulated only three exceptions to what is patentable:  (1) laws of nature; (2) physical phenomena; and (3) abstract ideas.[iii] With respect to process claims, the line between patentable “processes” and unpatentable principles or abstract ideas is not always clear.  The Supreme Court has yet to provide a concrete test by which such a distinction can be made.[iv] It did, however, provide a hint in Gottschalk v. Benson stating that “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”[v] From this pronouncement, the Federal Circuit formally presented and applied the machine-or-transformation test in In re Bilski.[vi] (more…)