Posts Tagged ‘USPTO’

Partnering In Patents XXI Program At USPTO Oct 22nd

Tuesday, October 21st, 2014

Since I am suffering from section 101 fatigue, tomorrow I will be speaking at this program on indefiniteness post-Nautilus. However, this meeting gets interesting earlier in the afternoon when Andrew Hirschfeld presents on “Updates on 101 training and Examiner Guidance” (working title) followed by Michael Stein, the “AIPLA Speaker” whose topic is “Understanding Patent Eligibility After Alice, Practical Tips for Practitioners and Examiners.”

The big question for my computer law and software brethren is whether or not there is any patent eligibility post-Alice for the inventions claimed in most of their pending applications? A quick survey by one of my partners indicates that over 90% of the applications filed by one big “software company” in Class 705 (Data Processing; Financial, Business Practice, Management, or Cost/Price Determination) that have received Office Actions in August received 101 rejections. As a stock car race driver once said to me when he was boxed in and about to “take the wall,” “I had nowhere to go but up.”

BIO Provides Supplemental Comments on PTO s.101 Guidelines

Tuesday, October 21st, 2014

BIO recently generated a letter to the PTO on the March 6th Guidelines on the patent-eligibility of subject matter in the life sciences, particularly “natural products.” BIO invited a group of in-house and private practitioners to comment on the Guidelines and a number of them – including myself – signed off on the letter. Following appearances by a Mr. Hirschfeld at a number of industry conferences and symposia, the biotech/pharma community felt that there is a realistic chance the initial Guidelines will be released in revised form in the near future.

Supplemental comments on USPTO Myriad guidance (10-14)

Genetic Technologies v. LabCorp. – Mayo Redux.

Tuesday, September 16th, 2014

It was Mayo redux with a vengeance in the September 23, 2014 decision in Genetic Technologies Ltd. v. Laboratory Corp. of Amer. Holdings et al., Civil Action No. 12-1736-LPS-CJB (D. Del. 2014).  Magistrate Judge Burke released an opinion invalidating claim 1 of Genetic Technologies U.S. Patent No. 7,615,342 as claiming non-patentable subject matter under s. 101 that could have been stenciled from the PTO s.101 Guidelines. Claim 1 was directed to a method to predict potential sprinting, strength or power performance in a human. The claim had an “analyzing step” to look for variations in the ACTN3 gene of the human, a “detecting step” to determine the presence of two 577R alleles at a loci of the ACTN3 protein and (c) a “predicting step” positively associating two copies of the allele with the performance elements.

Citing Mayo v. Prometheus and PerkinElmer v. Intema copiously, the correlation between the alleles and athletic performance was held to be a natural law and the analyzing and detecting steps were the “employment of … routine conventional process[es]” that were not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law. The “predicting step” was dismissed as “’no more than an instruction [to] apply the [natural] law.’ Prometheus, 132 S Ct at 1297.”

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101 Rejections Under the Guidelines: Mayo and Myriad “Go Viral”

Thursday, September 4th, 2014

This is a guest post from Hans Sauer, Deputy General Counsel, Intellectual Property for BIO.

“Recently, I set out to find real-world examples of recent rejections under the USPTO Guidance, to do my own sampling rather than rely on reported anecdotes. In just two hours of not very systematic searching, I was able to identify dozens of cases that have these new rejections, and I have attached some of the more interesting ones for you. [These can be found at the end of this post.] I focused mainly on applications with product claims, and pulled up method claims only incidentally.

“As expected, these new “product of nature” rejections go far beyond nucleic acid claims. Interesting examples include multipart vaccine preparations, industrial enzymes, organic crop protection products, a pharmaceutical composition and method of treatment involving an anticancer molecule from a marine sponge, and even a method for washing laundry. We’re also now seeing rejections of monoclonal antibody claims, which is something we were worried would happen. Perusing the attached rejections only takes a half hour; it’s a quick way to get an impression of what’s going on.”

Scanned from a Xerox multifunction device

Scanned from a Xerox multifunction device[1]

Scanned from a Xerox multifunction device[2]

Scanned from a Xerox multifunction device[3]