Patent Law Practice Center

Patent Docs: USPTO News Briefs

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 News Briefs,” and it reports on the Office’s announcement of  several AIA implementation dates. It also share the comments that have been posted in regards to the AIA’s implementation. The announcement was published on the USPTO’s website and provides a guideline of what can be expected in the upcoming months.

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PatentDocs: Kappos v. Hyatt (2012)

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, “Kappos v. Hyatt (2012),” and it discusses a 9-0 opinion written by Justice Thomas in which the United States Supreme Court firmly sided with applicant Hyatt regarding both the extent of new evidence that a dissatisfied applicant can produce during a §145 proceeding and the standard of review to be applied by the district court to such evidence.

The Supreme Court held that, “there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure,” echoing the Federal Circuit majority.  In regards to the issue of the standard of review, the Supreme Court held that “the district court must make a de novo finding when new evidence is presented on a disputed question of fact.”

Here is an excerpt: (more…)

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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Patent Docs: USPTO Proposed Rule Changes

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 comes from a collection of articles on Patent Docs covering the different proposed rule changes announced by the USPTO: preissuance submissions provision, statute of limitations provisions for office disciplinary proceedings, and oath or declaration provisions. (more…)

Patent Docs: Top Biotech/Pharma Patent Stories of 2011

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 comes from Patent Docs’ fifth annual list of the top biotech/pharma patent stories covered by Patent Docs in 2011. These stories were selected based on their potential to have the greatest impact on biotech/pharma patent practitioners and applicants.

Below is the post that covers the stories ranked numbers 12- 10. For access to the entire list of the top biotech/pharma stories of the past year, click here. (more…)