Patentability Of Surgical Methods – New Insights From The EPO

Posted on May 18, 2012 by Warren Woessner

iStock_000018536284XSmall - ERThis is a guest post from Dr. Stefan Danner
Patentanwalt/German Patent Attorney, European Patent Attorney

In its previous decision G1/07, the EPO Enlarged Board of Appeal (EBA) shed new light on the patentability of surgical methods, particularly those forming part of diagnostic methods. Based on this ruling the range of patentable subject matter is now limited in that methods that are surgical by nature but not necessarily by purpose are not deemed eligible for patent protection according to Article 53(c) EPC[1]

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SLW Invites You To A Free Webinar – America Invents Act: What Corporate Counsel Need To Know

Posted on May 17, 2012 by Warren Woessner

Please join Schwegman, Lundberg & Woessner, P.A. for an hour-long discussion on how combining litigation, reexamination, and interference results in the USPTO’s new adversarial proceedings: inter partes review and post-grant review. The AIA offers these proceedings to provide efficient patentability decisions designed to reduce the costs of litigation. Accused infringers must weigh potential estoppels against the benefits of the new proceedings, which provide for a settlement period and limited opportunities for discovery, depositions, claim amendments, and other motions.

The webinar will be on May 23, 2012 12:00 PM (CDT)

To register visit: www.slwip.com/whatnow/ or send an email to events@slwip.com and we’ll register on your behalf

About the Presenters

Lissi Mojica is an officer of SLW and considered to be among the world’s foremost experts in reexamination procedures. Prior to joining the firm, Ms. Mojica was a senior advisor at a Washington D.C. patent law firm, and served as an Associate Chair for the firm’s Post-Grant Law/Patent Reexamination Practice Group.

Kevin Greenleaf is a registered patent attorney and an associate at SLW. His practice includes patent procurement and post-grant review, portfolio analysis, technical analysis, and strategic counseling, with emphasis on computer architecture, software, circuit design, semiconductors, and microelectronic fabrication.

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USPTO Institutes “QUICK PATH” IDS PILOT Program

Posted on May 11, 2012 by Warren Woessner

The USPTO has announced the implementation of a pilot program, effective from May 16th until September 30th, to permit applicants to file IDS statements after payment of the issue fee in utility and reissue applications, without the need to continue prosecution by filing a “working” RCE with the IDS. The goal of the program is clearly to reduce the number of pending RCE’s, which now make up the majority of the docket of many Examiners. A link to the USPTO’s press release can be found at the end of this post.

The program is not without “catches.” Applicant must electronically file a request form (no new fee), the IDS, and still file an RCE and the Petition to Withdraw, with the usual fees. If the Examiner finds no reason to reopen prosecution, he/she will issue a supplemental notice of allowability and amended notice of allowance, and will not activate the RCE. Applicant will receive a refund of the RCE fees.  Otherwise the RCE will be activated, and prosecution will be reopened.

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In re Montgomery – “Unbounded” Inherency

Posted on May 10, 2012 by Warren Woessner

In re Montgomery, App no. 2011-1376 (Fed. Cir. May 8, 2012) (a copy is available at the end of this post), a divided panel affirmed the Board’s decision that a claim to a “new use for an old compound” was inherently anticipated by a reference disclosed in a proposed clinical trial that had not been carried out as of the effective filing date of the application. The claim in question was:

“A method for the treatment or prevention of stroke or its recurrence, wherein said method comprises administering, to a patient diagnosed as in need of such treatment or prevention, an inhibitor of the rennin-angiotensin system, said inhibitor having a Clog P greater than about 1.”

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