Archive for the ‘Miscellaneous’ Category

Happy Birthday To Us – Patents4Life Is Five!

Tuesday, March 4th, 2014

Which actually seems a bit surprising, since this life sciences blog is pretty much the observations of one patent attorney – me -  on developments in IP law. I do want to take the time to thank my fairly regular guest commentators – particularly Stephan Danner, Bill Bennett, Ron Schutz and Paul Cole.  But, apart from Bryan Ness and Mary Hirsch here at SLW, who do a great job of getting posts up there quickly, often before some of “bigger” blawgs can react, I am pretty much the only “journalist”—as one young interviewer called me—on the staff.

I was thinking of how to summarize the last half decade of IP law in a few paragraphs, but it’s really not possible. Most of the important judicial decisions, as well as the AIA, have amounted to cut-backs – or at least, sequestrations – of patent rights. I think that the PTO does not want to be judged or legislated out of business, and I have to give them credit for not over-reacting to largely policy driven decisions like Bilski, Mayo, and Myriad. But give a workman, or a bureaucrat, a new tool and they are probably going to use it. Ariad is such a tool and both the PTO and the courts have been using the WDR like Thor’s hammer to crush patents with both “mechanism of action” claims and ill-defined elements. Of course, a bright spot among this carnage was the Thersense decision that obliterated Rule 56(b) – but where are the final rules? The administration of the PTO is on hold as 2014 begins.


Stories I Missed In 2013

Thursday, January 16th, 2014

Some IP Stories Do Not Have Much “It” Factor.  Just like there used to be, and I guess still are, “It Girls” in showbiz and fashion, there are “It Issues” in IP law. I know these decisions/controversies are very important to the parties involved, but I just couldn’t get enthusiastic about these stories. However, since you may wish to investigate them further, I thought I would send out a short list.

1.  The legality of Michelle Lee’s appointment as Acting Deputy Director of the PTO (or whatever her title will turn out to be). More interesting would be the story of why Terry Rea was not offered the position (if she even wanted it).

2.  What “and/or” means in a patent claim. Although the PTO usually does not object to its use, it is probably better to write something like “at least one of A or B”, or “A or B or a combination thereof”.

3.  In case you have not noticed, prosecution history estoppel can limit the scope of a design patent. ‘Nuff said.


Marks & Clerk Releases Life Sciences 2013 Report

Monday, April 22nd, 2013

On Monday, the international law firm Marks & Clerk released it’s 2013 Life Sciences Report at the BIO International Convention in Chicago. This 50-plus page report is wide-ranging, containing both the views of life science leaders on marketplace issues like funding for new ventures (not favorable) and other trends in the pharma/biotech industry (more mergers and joint ventures). Although these opinion survey results are of some interest, particularly the focus on the AIA, SPCs and biosimilars, the “meat” of the report is Marks & Clerk’s attempt to summarize major IP trends in both the US (not good for diagnostics), the EP (not good for stem cells), Australia (scope of prior art broadened), India (compulsory licenses and attempts to clarify biotech patent standards) and even Thailand and Hong Kong. I think that  all of us working in the life sciences space should give this report at least a quick look – It is an ambitious and largely successful attempt to summarize “the year in IP law and business worldwide.”

2013 Life Sciences Report


Patents4Life is Four Years Old

Tuesday, March 26th, 2013

On March 24th, Patents4Life forgot to celebrate its 4th anniversary. On March 24, 2009, I started the blog (or is it “blawg”) by posting three articles on fairly recent Fed. Cir. decisions. One of the articles discussed the application of the then-recent “Bilski test” to the claims in suit in Classen v. Biogen (2008 WL 5273107) which involved a method of developing improved immunization schedules. The summary affirmance of the district court’s decision was based on the “machine or transformation test” developed in Bilski. Since at least one of the claims recited immunizing subjects, I wrote:

“The Bilski standard, now being applied in the area of biomedical technology, poses a significant threat to the viability of patents claiming diagnostic methods.”