Archive for the ‘Patentable Subject Matter’ Category

Myriad Guidance Comments

Thursday, July 10th, 2014

The USPTO is now publishing comments

http://www.uspto.gov/patents/law/comments/myriad-mayo_guidance_comments.jsp

 

More Questions Than Answers from the PTO

Wednesday, July 2nd, 2014

At the recent BIO International Convention, Deputy Commissioner Andrew Hirschfeld (who chaired the May PTO s.101 Forum) presented seven “Sample Claims” related to biotech/pharma inventions and invited “discussion and feedback” from the interested public. The claims have been posted on the PTO website (and can be found here). I will attempt some commentary on patent-eligibility under the new PTO Guidelines.

6. Antibiotic L, which is expressed by recombinant yeast. (Antibiotic L is secreted by a bacterial species and exhibits antibiotic properties when the bacteria functioning naturally)(Comments in parentheses are my slightly rewritten summaries of the background of the claims provided by the PTO in the slides.)

Patents4Life comments: We know that the Guidelines would require the Examiner to reject a claim to isolated antibiotic L or to a pure strain bacterial culture that would excrete the antibiotic into the medium–both are “natural products.” But in claim 6, a lot more of the hand of man is involved. But wait! This is a product-by-process claim and the PTO ignores process limitations when evaluating the patentability of a compound, and evaluates the compound per se. Now the “answer” turns on whether or not expression from yeast significantly alters the structure of antibiotic L, and we are not told whether or not it does. So the question is unanswerable at this point.

(more…)

USPTO issues post- Alice examination guidelines

Thursday, June 26th, 2014

A copy of the guidelines can be found here:

alice_pec_25jun2014

I will comment on this later.

 

CLS v Alice – Abstract Idea, Wherefore Art Thou?

Thursday, June 19th, 2014

Guest post from Brad Forrest, Shareholder at Schwegman Lundberg & Woessner, P.A.

Passing on the opportunity to provide a usable test to determine what is an “abstract idea,” the Supreme court simply compared the idea underlying the claims in Alice v. CLS Bank to those in Bilski and said they both are directed to abstract ideas implemented by a general purpose computer: “In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinc­tion between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.”

At least on the bright side, no further damage to subject matter eligibility appears to have been done by the decision.  It just appears to be a repeat of Bilski at first glance.

(more…)