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?

Live from the 6th Annual Patent Law Institute – Inside the PTO: AIA Rule Changes

Live from the 6th Annual Patent Law Institute, I am blogging from the panel entitled, “PTO Doings I: Rules and Regs That Are/Are Not Changing for 2012″. The featured panelists include Institute co-Chair John M. White, Brian Hanlon, Robert J. Spar. This afternoon’s discussion continues the close look at the outcome of the PTO rules and policy-making apparatus.  Highlights from our faculty speakers:

Two basic triggers for 2012 USPTO activity include:

  1. Office self-initiated actions: The Office moved forward with a number of efforts to improve and streamline the examination/prosecution process, and
  2. The AIA, enacted on Sept. 16, 2011: Required the USPTO to take implementing actions, essentially in 3 timed phases, for items effective in:
  1. Phase 1: immediately, or within 60 days
  2. Phase 2: in one year, or on Sept.16, 2012, and
  3. Phase 3: in 18 months, or on March 16, 2013.


Patent Law Institute is Around the Corner!

The Patent Law Institute returns for another exciting 2 day run on March 19th and 20th in San Francisco, California. Panel discussions are designed to be of ultimate practice value to all three subgroups in the patent law community: patent prosecutors, patent litigators, and strategic/transactional lawyers.  The Patent Law Institute’s New York run was a great success, with rare frankness from the judiciary and attorney panelists. The Institute brings together hundreds of the best patent law practitioners, federal judges and PTO officials as faculty and as Institute participants. Don’t miss this opportunity to learn from and network with the best!

Customize your participation to best meet your practice needs. The Institute has 6 plenary sessions of interest to all patent lawyers. Add your choice of 6 breakout sessions in 3 tracks specially designed for patent prosecutors, patent litigators and those focusing on strategic and transactional aspects of patent law. Plenary sessions include:

-Keynote Address by Robert L. Stoll, Commissioner for Patents
-A dialogue with Federal Circuit Chief Judge Randall R. Rader
-Corporate counsel divulge critical issues that keep them awake at night
-A distinguished panel of Judges from critical U.S. District Courts
-The practice impact of the America Invents Act, and recent Supreme Court and Federal Circuit decisions
-Special Feature: Earn 1 hour of legal ethics credit

If you can’t attend the Institute in person, we’ve added a webcast of the first day of the Patent Prosecution breakout track. Originally it was not webcast from New York City, however, Institute attendees said that the PTO information was too important not to webcast and archive, so we have created this special viewing for you! I will be live blogging from the Patent Prosecution breakout as well.

In Closing Black History Month, a Celebration of African-American Inventors from USPTO

As February draws to a close, we at the Patent Law Practice Center wanted to share in the USPTO’s celebration of African-American inventors and their role in the history of the patent office. In USPTO Director David Kappos’ blog, Director’s Forum, offers a look at “the invaluable contributions African-Americans have made, and continue to make, to the success of the American Experiment…”

In the article entitled, “In Celebration of Black History”, Kappos discusses the first African-American inventors to receive patents,

Among those to whom we owe our nation’s success are a number of innovative African-Americans who distinguished themselves in the field of intellectual property, even before the American Civil War and Emancipation. Although slaves were prohibited from receiving patents on their inventions in the antebellum period, free black inventors were not. Thomas L. Jennings, born in 1791, was 30 when he received a patent for a dry-cleaning process, making him what historians believe was the first black inventor to receive a patent. Jennings’s income went mostly to his abolitionist activities, and in 1831 he became assistant secretary for the First Annual Convention of the People of Color in Philadelphia. (more…)

IPWatchdog Review of “Dialogue Between the Bench and Bar” recently published an article reviewing the “Dialogue Between the Bench and Bar” panel featuring Chief Judge Rader at this year’s Patent Law Institute. The article entitled, “Chief Judge Rader Takes on Lobbying White House and SCOTUS”, was written by Gene Quinn, the blogger, Practice Center Contributor, and panelist at the Patent Law Institute.  Gene describes the interaction between the panelists who were not interested in “pulling punches” with each other. According to Quinn’s article,

The discussion was lively, perhaps even explosive.  You could nearly see sparks fly when Chief Judge Rader continued to pepper Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice.  Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.”

To read the article, “Chief Judge Rader Takes on Lobbying White House and SCOTUS”, click here.