Posts Tagged ‘Myriad’

USPTO TRIPs over Myriad-Mayo guidance

Thursday, July 31st, 2014

Timothy W. Roberts, Chartered Patent Attorney; MA (Oxon); LL.D (honoris causa, Sheffield University)

Paul G. Cole,  Chartered Patent Attorney;  MA (Oxon); LLM, NottinghamTrent; Visiting Professor, Bournemouth University

The above UK-based European Practitioners have today filed comments at the USPTO arguing that the USPTO’s Myriad-Mayo Guidance is inconsistent with the provisions of Article 27 of the TRIPs Agreement.

They argue that the ruling of Justice Thomas in Myriad is TRIPs-compliant only on the narrow holding that mere isolation of a DNA sequence unaccompanied by new, improved or extended utility does not give rise to eligibility. Any broader interpretation of the ruling e.g. to exclude natural products selected or isolated by the hand of man and possessing new or improved utility would be inconsistent with the express provisions of the Agreement. It will be recollected that Justice Ginsburg during oral argument in Myriad was concerned that the US was at risk of adopting a rule quite different from that of other industrialised nations and would be placing itself in an isolated position. Only the suggested interpretation, they argue,  would avoid those concerns, and they submit that the Court had these considerations in mind when it handed down its limited and cautious opinion in Myriad.


Myriad Guidance Comments

Thursday, July 10th, 2014

The USPTO is now publishing comments



Friday, June 27th, 2014

The deadline for Myriad-Mayo comments has been extended by a month.

Info on the USPTO website and can be found here.


Natural Products Eligibility Guidance – Post-Forum Comments

Tuesday, June 17th, 2014

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

Readers of this and other blogs will have been aware of comments of mine in relation to the USPTO natural product eligibility guidance.

Available here is the final version of the post-forum comments that I submitted  to USPTO on 15 June.

On substantive law, the comments take the position that the ruling in Myriad is concerned with reasons rather than structural differences and that the qualification for eligibility should continue to be a difference plus new utility.

A number of suggested replacement or additional examples have been included. Where appropriate, these have been created using real world examples such as cephalosporin plasmids and rapamycin based on real expired patents rather than notional examples such as Amazonic acid. It is believed that real world examples are more fairly representative of past and current research.

The end of the term for comments at the end of June is rapidly approaching. Those wish to summit comments on the guidance should do so using the myriad-mayo comment address .