USPTO Publishes Interim Process for Director’s Review of PTAB Decisions

Information from the USPTO:

[The USPTO’s] webpage houses useful information regarding the implementation of an interim Director review process in Patent Trial and Appeal Board (PTAB) proceedings following Arthrex.

Background

On June 21, 2021, the U.S. Supreme Court issued a decision in United States v. Arthrex, Inc., Nos. 19-1434, 19-1452, 19-1458, 2021 WL 2519433, addressing the Constitution’s appointments clause as it relates to PTAB administrative patent judges (APJs). The court considered whether APJs are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or, as the United States Patent and Trademark Office (USPTO) and the U.S. government argued, whether they are “inferior officers” who can be appointed by the Secretary of Commerce.

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Yu v. Apple – Transubstantiation of a Machine into an Abstract Idea

Every time the courts re-define a mechanical device as an abstract idea, I struggle with the rationale that is applied to evaluate the claimed subject matter for patent eligibility under s. 101. I am not a computer scientist so the Alice/Bilski notion that a computer programmed to perform a function more quickly than it can be performed by a human sitting at a desk with a pencil and paper is not a technological advance has some appeal. After all, the idea of patents being granted for computerized versions of hoary business practices threatened to overwhelm the PTO. One the other hand, Diehr warned that all inventions can be reduced to underlying principles of nature which, once known make their implementation obvious. Recently, Yu v Apple , Appeal No. 2020-1760  (Fed. Cir., June 11, 2021) exemplifies the dangers of this oversimplification when it is used to render a specialized camera claimed in U.S. Pat. No. 6,611,289 patent-ineligible. This was a split panel decision, with Judge Prost writing for Judge Taranto and Judge Newman dissenting.

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Important Amendments to Chinese Patent Law

Guest post from Deshan Li, Ph.D., Executive Vice President and Senior Partner at Unitalen Attorneys at Law.

On October 17, 2020, the amendments to the Patent Law were adopted by the Congress, which will come into effect as of June 1, 2021. The main points of the amendments that will have substantial influences on patent practice are outlined below.

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Biogen v. Serano – When is a Recombinant Polypeptide Novel?

When I posted about this Fed. Cir. decision (Biogen MA v. EMD Serano, Appeal no. 2019-1133 (Fed. Cir., Sept. 28, 2020) on October 12, 2020, I viewed it as a straightforward application of the maxim that an otherwise non-novel product does not become novel by reciting method of preparation steps in the claims, e.g. that is “nested’ in the claims. Now, after reading Biogen’s petition for cert. filed in May 2021, I am not so sure that the Fed. Cir. decision is as simple as the panel would have us believe. The main claim of U.S. Pat. No. 7,588,755 reads, in part:

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