Patentability Issues for Plants in the EPO

Posted on July 15, 2013 by Warren Woessner

While this decision from the EPO Technical Board of Appeal raises more questions than it answers, it does a very good job of framing the issues and uncertainty regarding the patentability of plants in the EPO. The claim was to a broccoli plant containing elevated levels of certain anti-cancer compounds. The plant was claimed in product by process form that recited only conventional breeding and selection step. However, while plant varieties are not patentable in the EPO, and conventional plant breeding methods are not patentable either, the question remains as to whether improved plants that are not claimed as varietals but that are made by conventional breeding methods are patentable.

You can find a guest post on this decision “Broccoli Reheated — Second Referral to The EPO Enlarged Board of Appeal” by Dr. Stefan Danner below.

07 13 Patentability of plants

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Myriad Brings Out Its “Reserve Claims” To Challenge Ambry

Posted on July 10, 2013 by Warren Woessner

In my post on this blog of June 17th, I speculated that the positive comments by the Supreme Court in the Myriad decision about the patent-eligibility of claims directed to new applications of natural products (like the BRCA genes) would be available to temper the damage caused by the Court’s holding that isolated genes are not patentable. I wrote that this language seemed to mirror Judge Bryson’s concurrence-in-part in the Myriad decision below. I, and some of the commentators noted that not all of the Myriad method claims had been challenged by the ACLU.

Myriad apparently intends to test these legal waters by filing suit in Utah on Tuesday to enjoin Ambry Genetics Corp. from offering its versions of the BRACA1 and BRACA2 tests. Among the asserted claims were the method claims not challenged by the ACLU or considered by the Supreme Court, including the remaining method claims of U.S. Pat. No. 6,033,857. In its complaint, Myriad noted that the Court “underscored the importance and applicability of method-of-use patents for gene-based diagnostic tests.”

Although nothing will happen very quickly in this suit, at least Myriad has a friendly forum to hear its case this time, and seems determined to force the courts to separate the sheep from the goats in this important area of technology.

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Wyeth v. Abbott Labs. – Picking Plaintiff’s Poison

Posted on June 28, 2013 by Warren Woessner

In July of 2011, I wrote a post for this blog on BSC v. J&J, a Fed. Cir. decision in which four J&J patents claiming stents eluting rapamycin, a drug that inhibits restenosis after balloon angioplasty, were held invalid for failure to meet the requirements of the written description requirement of s. 112 (1) [now s. 112(a)]. While the specification only disclosed stents releasing rapamycin, the claims used broader language, such as “rapamycin or a macrocyclic triene analog of rapamycin.” While such analogs were known, none were named in the specification. Still, J&J must have felt that they had a fighting chance, since a specification need not describe that which is known to the art.

A three-judge panel of Moore, Bryson and Gajarsa found that the claims failed to meet the WDR. However, instead of explaining why the specification read in combination with the knowledge available to the art about rapamycin analogs fails the UC v. Lilly WDR standards, Moore and Bryson relied on the deficiencies they found in the specification:

“Given the absence of information regarding structural characteristics of [rapamycin analogs] in the specification, the unpredictability of the art and the nascent state of using drug eluting stents…we affirm the [grant of SJ]. The patent laws do not reward an inventor’s invitation to other researchers to discover which of the thousands of macrocyclic lactone analogs of rapamycin could conceivably work in a drug-eluting stent.”

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Finally, A Reasonable Decision

Posted on June 24, 2013 by Warren Woessner

This is a guest post from Greg Stark, attorney at Schwegman Lundberg & Woessner.

Attached at the end of this post is an annotated copy of the June 21st decision from the Federal Circuit in Ultramercial v. Hulu. The underlying patent is directed towards a method for monetizing and distributing copyrighted material over the Internet.  Chief Judge Rader pens a good decision for the software patent community attempting to clarify (and mitigate) any fallout from the CLS decision.  The decision is careful not to craft new law, but rather to apply previous precedent in a more thoughtful manner.

Rader is careful to point out that all issued patents should carry the presumption of being directed to patent subject matter, and that this presumption must be overcome by clear and convincing evidence.  In highlighting the presumption of validity, Rader appears to be attempting to prevent courts from boiling claims down to their abstract idea and then routinely deeming them ineligible subject matter (as all meaningful limitations are removed in the process).

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