Archive for the ‘Miscellaneous’ Category
A new website came across my inbox this week. It is called Examiner Ninja and provides analytics on patent examiners. The creator of the website, Justin Roettger, says the website is free and told me “I’m just looking to contribute something to the community that I am now a part of.” Looking at the website you can learn more about Justin:
“Hi! My name is Justin Roettger and I live in Los Angeles, CA. When I’m not fooling around with patent examiner websites, I like woodworking, tinkering with electronics, and ping pong. I built this site as a side project while waiting for the USPTO to complete my registration after passing the patent bar last October. I currently work in web development / IT but I’m hoping to transition into working as an EE/CS patent attorney soon. Feel free to shoot me an email at firstname.lastname@example.org for site feedback, questions, suggestions, etc.”
Take a look and see what you think.
In fact, Patents4Life’s birthday was in late March of 2009, but the earliest posts were short papers I wrote for an IP newsletter that no longer exists. However, the s. 101 storm clouds were gathering even then. One article (in the archives for March 2009) was on how the Fed. Cir. affirmed the invalidation of immunization claims in Classen, using the Bilski machine-or-transformation standard for patent eligibility. (When Classen was revisited after the S. Ct. repudiated the M or T test, the claims reciting immunization were found to meet the requirements of s.101, while the claims that were directed to selection of the optimal immunization schedule did not make it through the coarse filter of 101.)
However, my co-author on this paper, an M.D., saw the threat to diagnostic claims pretty clearly:
“[Unlike diagnostic method claims that alter the body – like immunization] many diagnostic claims do not require the conversion of substance A into substance B. For example, consider claims to a simple blood test in which the presence of a particular substance predicts or diagnoses a disease. [Myriad-type diagnostic claims] involve ‘comparing’ genetic sequences and ‘diagnosing’ the presence of mutations… However, courts may not recognize a molecular transformation such as [the steps necessary to isolate the gene and detect it], or they may not consider it ‘central to the purpose of the claimed process’, as required by Bilski. Thus, Bilski could turn out to be quite problematic for comparison-type diagnostic claims.”
Even though the S. Ct. replaced the M&T test with the Mayo/Alice Rule, the language of this passage could have been written about Ambry (“Myriad II”) or Ariosa. I was going to write an April Fool post in which the Fed. Cir. affirms the patent-ineligibility of a basic chemical composition or treatment method of some sort but how does one top gunpowder or the incredibly convoluted PTO analysis of “amazonic acid?” Maybe I could sing a few verses of “Send in the Clowns” (“Don’t bother, they’re here.”)
Takeaways from Our March 2016 Cincinnati Seminar
By Donald S. Chisum and Janice M. Mueller
Copyright 2016 Chisum Patent Academy, Inc.
On March 10-11, 2016 the Chisum Patent Academy held a small-group seminar at the 21C Museum Hotel in Cincinnati, Ohio to discuss and debate current developments in U.S. patent law. Our theme was “Obviousness in the Time of IPR.” The roundtable seminar group was limited to ten persons; treatise authors and educators Donald Chisum and Janice Mueller led each of four discussion sessions. Our Cincinnati participants were experienced patent litigators and prosecutors from law firms and corporations in Cincinnati, Cleveland, Minneapolis, New York City, and Pittsburgh.
Here’s a recap of our takeaways from the Cincinnati seminar: