Archive for August, 2012

Admissibility of Disclaimers – New Lessons From The EPO Technical Boards of Appeal

Thursday, August 23rd, 2012

The following is a guest post from the 8/12 newsletter of Dr. Stefan Danner of DHS Patentanwaltsgesellschaft mbH

Last year, the EPO Enlarged Board of Appeal (EBA) handed down its decision in case G2/10 relating to the admissibility of disclaimers whose subject matter was disclosed as an embodiment (i.e. ‘positively disclosed’ disclaimers) in the application as originally filed.1

The EBA ruled that an amendment to a claim by the introduction of a disclaimer disclaiming from it subject matter disclosed in the application as filed infringes Article 123(2) EPC if the subject matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed in the application as originally filed.

Determining whether or not that is the case requires an assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application, the nature and extent of the disclaimed subject matter and its relationship with the subject matter remaining in the claim after the amendment. In other words, the examination of the admissibility of a disclaimer for compliance with Article 123(2) EPC has to be made separately for the disclaimer per se and for the subject matter remaining in the claim.

The entire newsletter can be found here.

Chisum Patent Academy Announced 2013 Seminar Dates

Wednesday, August 22nd, 2012

This seminar series, taught by Donald Chisum, the leading authority on evolution  in patent law, and my former law clerk, Prof. Janice Mueller, explore contemporary developments in patent law in detail.  How about a session on how to respond to the new s. 101 Mayo/Myriad rejections that Examiner’s have begun to lay on us?

For more information, go to


Federal Circuit Opinion On Myriad Remand

Thursday, August 16th, 2012

Today, the Federal Circuit issued its opinion following GVR from the Supreme Court in AMP v. USPTO and Myriad Genetics, Inc., App. No. 2010-1406 (August 16,2012). (A copy of the opinion is available at the end of this post.) Unfortunately, the opinion, authored by Judge Lourie and joined in part by Judges Bryson and Moore, contained nothing to give hope that diagnostic methods resting on natural correlations would be patentable in the future.

The panel began with 36 pages on the standing issue, holding that only Dr. Ostner, who had received a “licensing letter” from Myriad, had standing to pursue this action.

Pages 35-55 of the 62 page majority opinion focused on the claims to isolated DNA molecules, clarifying that “[i]solated DNA is not just purified DNA…but is different in name, character and use.” Judge Lourie wrote that isolating a sub-unit molecule by breaking covalent bonds is not a trivial alteration, since the covalent bond is the “defining boundary” between one molecule and another. Slip op. at 46-48.

Claim 20, directed to the use of transgenic BRCA gene-containing cells to screen for anti-cancer drugs, was likewise held to be patent-eligible, since the “underlying subject matter is man-made.”


USPTO Publishes Rule Package on AIA Administrative Trials

Tuesday, August 14th, 2012

While this is primarily a biotechnology patent law blog, the USPTO’s high level of rule making activity deserves attention, as it will affect us all after the September 16th deadline for implementing many of the new features of the AIA passes. Today, the PTO publishes over two hundred pages of regulations, guidelines and “Rules of Practice’ regarding Inter Partes Review, Post-Grant Review, the Transitional Program [to attack] Business Method Patents, Supplemental Examination (to “purge inequitable conduct”) and the new procedures by which a person having rights to the invention can file an application in lieu of the inventor(s).

Below are links to the six USPTO Federal Register Notices –

Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, etc.

Changes to Implement Inventor’s Oath or Declaration Provisions of Leahy-Smith America Invents Act

Changes to Implement Supplemental Examination Provisions of Leahy-Smith America Invents Act and Revise Reexamination Fees

Office Patent Trial Practice Guide

Rules of Practice for Trials before Patent Trial and Appeal Board and Judicial Review of Decisions

Transitional Program for Covered Business Method Patents: Definitions of Covered Business Method Patent and Technological Invention