Legal Wiggle Room in the Joint AIPLA-IPO Proposal on Patentability?

I recently took another look at the Joint AIPLA-IPO Proposal on Patent Eligibility that was prompted by the scheduling of a discussion meeting by the Minnesota Intellectual Property Law Association. I confess that I did not participate in either the AIPLA’s proposal process and cannot attend the upcoming MIPLA meeting but, nonetheless I have some thoughts.

The Joint Proposal to amend section 101 reads as follows:

“Eligible Subject Matter

(a)  Whoever invents or discovers, and claims as an invention, any useful process, machine, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

Sole Exceptions to Subject Matter Eligibility

(b)  A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole (i) exists in nature independently of and prior to any human activity or (ii) is performed solely in the human mind.

Sole Eligibility Standard

 (c) The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to:

1. The requirements or conditions of sections 102, 103, and 112 of this title;

2. the manner in which the claimed invention was made or discovered; or

3. whether the claimed invention includes an inventive concept.”

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Novartis v. Breckenridge: Obviousness-Type Double Patenting Explained

Without trying to summarize this well-written opinion by Judge Chen, I simply recommend that you store it somewhere and pull it out when you have a tricky obviousness-type double-patenting situation and want a thorough review of the doctrine. The opinion reviews both the facts of the present dispute, which involved pre- and post-URAA filing dates, and of the precedent, a Gilead case and an AbbVie case – with clear charts as well.

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IP Update – Canada | New Patent Rules released: 12 Notable Changes & Tips

Canada flagGuest Post from David Schwartz and Jeff Leuschner of  Smart & Biggar.

On December 1, 2018, the Canadian government released its proposed new Patent Rules in the Canada Gazette, Part I. This is one of the last steps necessary for implementing significant changes to Canada’s patent law, which are expected to come into force in 2019.

There will be many changes to Canadian patent law and practice. In this article we discuss the most notable changes expected, and some tips for safe and effective practice under the new rules.

Six changes to look forward to

The intent of many of the changes is to implement the Patent Law Treaty and to help minimize the risk of loss of rights. Changes we look forward to include:

1. Restoration of priority will be available

Currently, in order to make a valid priority claim in Canada, the Canadian patent application must be filed no more than 12 months after the filing date of the priority application.

The new system will allow for the 12-month priority period to be extended to 14 months if the failure to meet the 12-month deadline was unintentional. This change will bring Canadian practice into line with the right of restoration of priority provided for in Rule 49ter of the Regulations under the PCT.

However, the Federal Court of Canada can reverse the restoration of priority and declare the priority claim invalid if it is later determined that the failure to meet the 12-month deadline was intentional.

Tip: The “unintentional” standard for restoration of priority in Canada will likely be easier to meet than a “due care” standard applied by some other patent offices. Consider Canada as a favourable choice for situations in which restoration of priority must be relied upon.

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Life Science Patenting to Iancu – “We need help too!”

In his remarks presented at the recent 10th Annual Patent Law & Policy Conference at Georgetown University Law School, USPTO Director Andrei Iancu outlined the analytical framework for the new, eagerly awaited, PTO Guidance on patent eligible subject matter. Although his remarks touched on the judicial exception for claims directed to “pure discover[ies] of nature, like gravity or electromagnetism, and mentioned technologies such as computer viral screening and methods of medical treatment, the focus of his remarks was on the patent eligibility of “prohibited abstract ideas.”

He defined abstract ideas as falling into one of three categories: 1) mathematical concepts, 2) certain methods of organizing human interactions… [such as] advertising, marketing and sales activities [e.g., Bilski or Alice] and 3) mental processes, “which are concepts performed in the human mind, such as forming an observation, evaluation, judgment or opinion.” Director Iancu then focused on the overriding importance of determining whether or not a claim is simply directed to a judicial exception or is “a practical application of otherwise excluded subject matter….for example, we should be able to differentiate between [a claim drawn to] electromagnetism itself, on one hand, [and claims to] toys that communicate with each other using electromagnetic signals, on the other.” Not surprisingly, he cited Diehr approvingly.

His proposed analytical framework for examiners attempting to resolve the s. 101 question is first, to “look to see if the claims fall within the four statutory categories: process, machine, or composition of matter (This is not new, we always do this). If so, examiners then determine if the claims recite subject matter within one of the judicial exceptions, categorized as I just described (This is the new approach.)” If they do not the Examiner moves on to ss. 102, 103 and 112. If they do, the examiners “would assess whether the claims integrate the exception into a practical application of the otherwise excluded material. If so, the claim passes the 101 test and eligibility analysis is concluded.”

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