Archive for the ‘Miscellaneous’ Category

Physiology/Medicine Nobels Awarded for Discoveries of “Natural Products”

Thursday, October 8th, 2015

nobelIn re Roslin Institute, a Fed. Cir. panel consisting of Judges Dyk, Moore and Wallach ruled that clones including Dolly the sheep were not patent eligible. Judge Dyk, writing for the panel endorsed the “markedly different” structure requirement for patent eligibility that the PTO had proposed abandoning in December 2004:

“[According to Chakrabarty], discoveries that possess ‘markedly different characteristics from any found in nature,’ are eligible for patent protection. In contrast, any existing organism or new discovered plant found in the wild is not patentable.”

In Ariosa, Judges Renya, Linn and Wallach turned a method of isolation of cffDNA into a “natural product”:

“The method therefore begins and ends with a natural phenomenon. Thus the claims are directed to matter that is naturally occurring….Because the claims at issue are directed to naturally occurring  phenomena, …the practice of the method claims does not result in an inventive concept that transforms the natural phenomenon of cffDNA into a patentable invention.”


25 Critical Patentability & Validity Developments

Monday, September 28th, 2015

bookThe Chisum Patent Academy is pleased to announce the September 2015 publication by Wolters Kluwer Law & Business of the annual Update for Volume I (Patentability and Validity) of the practitioner treatise, Mueller on Patent Law, authored by our co-founder, Janice M. Mueller

The two-volume Mueller on Patent Law treatise was first published in 2012. Volume I addresses patentability, validity, and prosecution procedures; Volume II covers patent infringement, USPTO post-issuance procedures, design patents, and international patenting issues. For detailed tables of contents for both volumes, click here.



Friday, June 26th, 2015

A Triumph of GeniusI am not sure that I have ever reviewed a book review before, but Donald Chisum and Janice Mueller  have written a thorough and thoughtful review of Ronald Fierstein’s  book, “A Triumph of Genius” recounting one of the major patent infringement suits of modern times, Polaroid v. Kodak, which encompassed about a decade spanning the late 70’s to the mid-80’s. Polaroid prevailed at the Fed. Cir., in 1986 and put Kodak out of the instant camera business.

My connection to this litigation was peripheral, to say the least, but it was emotionally tangible. Kenyon & Kenyon represented Kodak, and I joined the firm as an associate in 1981. Although I had fine mentoring, there were associates whom I did not meet until months after I started, since they had temporarily taken up residence in Boston, where the “D Mass.” suit was being tried.

Although the loss to Polaroid stunned the IP world, it didn’t slow down Kenyon & Kenyon’s growth–I recall that the senior associates who worked on the case “made partner” — or its ability to attract major litigation, and I was soon sucked into the “Cookie Wars” between Kenyon’s client Nabisco, and Frito-Lay et al. But someone else will have to write that book.



U.S. Patent Commissioner Focarino To Retire

Friday, May 1st, 2015

From IPO Daily News, Friday, May 1, 2015

Peggy Focarino_smallThis week U.S. Patent and Trademark Office’s Commissioner of Patents Margaret (Peggy) Focarino announced that she will retire on July 3 as U.S. Patent and Trademark Commissioner. Focarino has been with the USPTO for 38 years. Executive Director Herb Wamsley said “Focarino has consistently earned high marks for her management skills and her strong interest in working closely with user groups. We wish her well in retirement.” Focarino’s successor has not been named.

She was appointed Commissioner of Patents in January 2012; she was the first female to serve in that role. As Commissioner, Focarino is responsible for management and direction of all aspects of patent operations, examination policy, resources and planning, and budget administration. She previously served as Deputy Commissioner for Patents. Focarino also served as Acting Director and Deputy Director of the USPTO before Michelle Lee’s appointment in late 2013.