Archive for April, 2011

Patent System Fosters Eugenics – What Next?

Wednesday, April 27th, 2011

USA TODAY ran a provocative article yesterday (April 26, 2011) on the “dark past” of the respected journal Annals of Human Genetics, in which its editor, Andres Linares did a mea culpa for the role of the journal, founded in 1925 and then called Annals of Eugenics, in promoting racial purity and preventing inferior races and social classes from reproducing. I was startled to find that the patent system was tied into the story as a part of “modern genetics today [that] still suffers from the same blind spots that fostered eugenics.” Along with the evils of “[s]tudies that ascribe genes to explain complex character traits” that are promoted by geneticists, are:

“Scientists seeking patent rights over their patient’s genes, a hotly contested area of current law because of the argument patent rights don’t extend to natural products.”

Apart from the fact that this could have been taken from an ACLU Myriad press release, what does the patent system have to do with eugenics? A better choice for criticism might have been: Scientists seeking to develop therapies for genetic disorders by introducing repaired DNA into a patient’s genome – although the “gene therapies” under trial  today are not experiments in eugenics, any more than is patenting a “healthy” or a “defective” gene. But, to borrow from  David Letterman, I wouldn’t give the patent system’s problems to a monkey on a rock.

Where Will the Burden Fall – Microsoft v. i4i Argued Before the Supreme Court

Monday, April 25th, 2011

Find below a recent article from Robins, Kaplan, Miller & Ciresi L.L.P. regarding Advanced Patent Trial Strategies (APaTS).

i4i APaTS Special

H.R. 1249 Voted Out Of Committee: No Grace Period For You!

Monday, April 18th, 2011

You may well be tired of hearing about the contending amendments, but I must note that the House version of the America Invents Act was voted out of Committee after being amended to reinstate the section of 102 that limits the exceptions for inventor activity within one year of filing to publications and disclosures, while not including the inventor’s “public use” or “on sale” activity in the grace period. The upshot is that the bill that will reach the House floor for a vote is identical in this section as it appears in S. 23, which the Senate passed. Amendments can still be made before the House votes, but the odds of having a broadly protective grace period are getting long. As Hal Wegner has repeatedly noted and Matt Osenga have pointed out in his useful note, “(Lack of) Grace Period in America Invents Act”, 102(b) currently provides that public use or sale (by anyone) is only a problem if it takes place more than one year prior to the date of application for the patent. Under the amended bill, an inventor’s (or anyone else’s) offer for sale one day prior to filing a patent application would be a bar to obtaining a patent (even if the inventor had made an “excepted disclosure” 363 days earlier).  This is getting as hard to follow as a double-jointed rattle snake, but it may be as dangerous to early-stage developers. At least there is some rattling going on.

Update, Partner and Innovate — AUTM Eastern Regional Meeting

Thursday, April 14th, 2011

I will be on a panel entitled “Kicking the Hornet’s Nest – Patenting Early Stage Technology” at the AUTM Eastern Regional Meeting in Baltimore (May 24th). I will be joined by Esther Kepplinger, Director of Patent Operations at Wilson Sonsini and Dr. Kathryn R. Doyle of the Riverside Law Group. We will cover new developments in patenting DNA, claiming diagnostic methods and what the full-term written description requirement of Ariad v. Lilly means to your patenting strategy. How is isolated DNA different than a gold nugget? How is a diagnostic method like Murphy’s Law? Can you still get a mechanism-of-action claim? Your panel of experts will answer these questions and more.  Y’all come!