Archive for the ‘Uncategorized’ Category

PTO s. 101 Forum – Thumbs Down on Practitioners

Monday, May 12th, 2014

The USPTO held a four hour public forum on the new, disruptive s. 101 examination guidelines on Friday afternoon. The forum featured ten speakers from the patent bar, including Hans Sauer of BIO, Leslie Fishcher from Novartis, Barbara Fiacco (for the AIPLA), Greg Cox (speaking for the ABA IPL Section) and your truly (speaking out for justice, of course – my slides are attached). There were also three break periods where the studio audience or webinar participants asked questions.

There were brief opening remarks by Deputy Director, Michelle Lee, but the Forum was presided over by Drew Hirshfeld, who is Deputy Commissioner for Patent Examination Policy (He has Steve Kunin’s old job) and who signed off on the Guidelines. Jerry Lorengo, the relatively new Director of 1600 was present, but did not have a big role in the proceedings. Mr. Hirshfeld’s Legal Advisor, Raul Tamayo, made the PTO’s position on compound and composition claims clear: “The Supreme Court has never held that a claim reciting a natural product eligible unless it was structurally different from what occurs in nature.” The PTO clearly intends to fill that gap in jurisprudence, and has taken the position that a functional difference cannot per se meet the requirement for a structural difference.


USPTO Patent Eligibility Guidelines – A Step Too Far For Natural Products?

Friday, March 7th, 2014

Guest Post from Paul Cole, Lucas & Co., UK

New Prometheus/Myriad guidance appeared on the USPTO website on 4March under the weighty title 2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products. A profound, and it is submitted unjustified, change is introduced in Example B of that guidance which concerns chemical substances purified from nature.

In 1900 Dr Jokichi Takamine succeeded in isolating and purifying adrenalin in fine crystalline form from the adrenal glands of sheep and oxen, for which he was granted US Patent 730176 in June 1903. The new product was said to be storage stable when dry and when injected into an animal to bring about a rise in blood pressure. A number of product claims were granted of which the following is representative:

“A substance possessing the herein described physiological characteristics and reactions of the suprarenal glands, having approximately the formula C10H15NO3 and having an alkaline reaction.”


Bosch, Ultramercial, Commil, Fresenius: All-Star Break

Tuesday, July 23rd, 2013

A guest post from Ron Schutz of Robins, Kaplan, Miller & Ciresi

The Federal Circuit goes into the symbolic half-way point of summer leading the league with a series of homerun opinions. To keep the games back gap on updates from widening, consider the following take on a Midsummer Classic.

Bosch v. Pylon In Bosch, the Federal Circuit considered en banc two questions regarding the extent of its appellate jurisdiction under 28 U.S.C. § 1292(c)(2). That statute authorizes an interlocutory appeal from a judgment in a patent infringement judgment action that is “final except for an accounting.” Sua sponte, the court asked whether § 1292(c)(2) confers jurisdiction for an appeal of patent infringement liability before a trial on damages has occurred and whether that jurisdiction exists when willfulness issues remain undecided.


Happy Birthday To Me – Patents4Life is Three!

Tuesday, March 20th, 2012

Three years ago, when I started this Blog (or is it “Blawg”?), the hot topics were In re Kubin and the summary affirmance of Classen by the Fed. Cir. Today, along with the looming AIA regulations, Mayo v. Prometheus and Caraco are awaiting decision by the Supreme Court, and St-Gobain Ceramics v. Siemens and  AMP v. Myriad are awaiting decisions on their petitions for cert. The old Chinese curse, “May you live in interesting times!” is “new again”, even if “The Art of War” is not on the Times  bestseller list (but “American Sniper” is).

Well, the IP world around us has been nothing if not interesting. It is foolish to try to predict what will hold our (and the courts’ ) interest over the next year, much less three years. However, a trend that is easy to spot is the interest exhibited by the current Supreme Court in IP cases. When I did my list of the top ten IP stories of 2011, six of them involved the Supreme Court.

Another one is the rise of IP and bioethics issues related to “personal genomics”, “genome-scale testing” or “companion diagnostics” (however you wish to term it). Today, the journal, Narrative Inquiry in Bioethics announced that it will publish an issue devoted to personal stories from individuals who have received results from genome-scale testing – such as from a SNP profile (bet you haven’t heard that term in a while). On the flight home from AUTM, I read a story about one such individual in the LA Times – a professor who had his entire genome sequenced and posted it so that any group could venture a diagnosis or other observation. One group spotted a marker for type II diabetes, which the prof obligingly developed after recovering from a viral infection.