Archive for May, 2012

Chisum Patent Academy to Convene in Seattle

Friday, May 25th, 2012

Patent Law Expert Donald Chisum and Professor Janice M Mueller will be co-lecturers at the three day Intensive Patent Law Seminar in Seattle, July30 – August 1, 2012.

To find out more information on the seminar, click here.

Prometheus Unbound – Are Methods Of Medical Treatment The Next “Targets”?

Tuesday, May 22nd, 2012

In my March post “Unnatural Acts – Patenting Diagnostic Tests Post-Prometheus” I wrote:

“I have been trying to formulate diagnostic claims that would pass muster post-Prometheus and I am having trouble. If a researcher discovers the marker, the researcher should be able to patent it and ANY utility it has, including its use for the diagnosis/prediction of disease. Likewise if the researcher discovers a completely new utility for a known marker – e.g., as an  indicator of Alz Disease, this should meet the patent eligibility requirements of s. 101. However, the correlations that the researcher bases the assay claims on are still ‘natural phenomena’ according to Prometheus. So we patent attorneys are completely cycled back into the loop of [divining] what further steps are necessary to yield a patent-eligible claim for the new diagnostic correlation.”

Last night, a new monster crawled out from under the legal bed we have to lie in after Prometheus. It is not simply that diagnostic claims based on “If ‘a’ then ‘b’” naturally-occurring correlations are of doubtful patent-eligibility; we already know that Justice Breyer will exclude such diagnostic claims, such as the one involved in the “Metabolite Dissent,” the first chance he gets – so long as he can hold the Court together. The new monster is a modern Frankenstein stitched together from the language in Prometheus:


Patentability Of Surgical Methods – New Insights From The EPO

Friday, May 18th, 2012

This is a guest post from Dr. Stefan Danner
Patentanwalt/German Patent Attorney, European Patent Attorney

In its previous decision G1/07, the EPO Enlarged Board of Appeal (EBA) shed new light on the patentability of surgical methods, particularly those forming part of diagnostic methods. Based on this ruling the range of patentable subject matter is now limited in that methods that are surgical by nature but not necessarily by purpose are not deemed eligible for patent protection according to Article 53(c) EPC[1]


SLW Invites You To A Free Webinar – America Invents Act: What Corporate Counsel Need To Know

Thursday, May 17th, 2012

Please join Schwegman, Lundberg & Woessner, P.A. for an hour-long discussion on how combining litigation, reexamination, and interference results in the USPTO’s new adversarial proceedings: inter partes review and post-grant review. The AIA offers these proceedings to provide efficient patentability decisions designed to reduce the costs of litigation. Accused infringers must weigh potential estoppels against the benefits of the new proceedings, which provide for a settlement period and limited opportunities for discovery, depositions, claim amendments, and other motions.

The webinar will be on May 23, 2012 12:00 PM (CDT)

To register visit: or send an email to and we’ll register on your behalf

About the Presenters

Lissi Mojica is an officer of SLW and considered to be among the world’s foremost experts in reexamination procedures. Prior to joining the firm, Ms. Mojica was a senior advisor at a Washington D.C. patent law firm, and served as an Associate Chair for the firm’s Post-Grant Law/Patent Reexamination Practice Group.

Kevin Greenleaf is a registered patent attorney and an associate at SLW. His practice includes patent procurement and post-grant review, portfolio analysis, technical analysis, and strategic counseling, with emphasis on computer architecture, software, circuit design, semiconductors, and microelectronic fabrication.