No USPTO Shutdown For Now

Posted on April 7, 2011 by Warren Woessner

A Message from Director David Kappos

Dear Colleagues,

As you know, the Administration is working diligently with Congress to ensure that the federal government remains open and continues to do its work on behalf of the American people. However, I wanted to personally inform you that even in the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual, for a fixed period, with all USPTO staff continuing to work and being paid.

Because the USPTO maintains sufficient funding not linked to the current fiscal year, the USPTO can and will stay open for business. We have enough available reserves to remain in operation for six business days and intend to do so. During that time we will continue to process the patent and trademark applications that drive our country’s innovative economy. Should a shutdown continue longer than the six-day period, a small staff will continue to work to accept new applications and maintain IT infrastructure, among other functions.

I know this news may prompt some additional questions. As soon as any new information comes to light, we will make sure to inform you thoroughly and promptly. Your respective business unit managers will also be reaching out to you to provide further clarification if needed.

Thank you for your hard work and your continued public service.

Sincerely,
David Kappos

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PTO Issues Final Rule to Implement Prioritized Examination Track (Track I)

Posted on April 6, 2011 by Warren Woessner

The following is from the Schwegman, Lundberg & Woessner Newsletter, April 6, 2011.

The Patent and Trademark Office on April 4, 2011, issued a final rule to implement prioritized examination upon an applicant’s request and payment of a $4,000 request fee and other filing fees.  76 Fed. Reg. 18399.

Under the new rule, 37 C.F.R. 1.102(e), prioritization is available only for an original and complete utility or plant nonprovisional application that contains or is amended to contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.  The goal is to provide a final disposition (notice of allowance, final office action, notice of appeal, declaration of interference, or RCE) within twelve months of an application’s receiving prioritized status.

The effective date of the new rule is May 4, 2011, and requests for prioritization may be submitted on or after that date for new applications filed on or after May 4, 2011. The request must be submitted with the application being filed along with the request fee and other normal filing fees. Time periods for response are not shortened, but filing of a petition for extension of time during prosecution will result in termination of prioritized examination. Note that prioritized examination does not change the odds of obtaining a patent.

The Federal Register notice states that the Office is limiting requests to a maximum of 10,000 applications during the remainder of fiscal year 2011. The notice also states that the Office lacks statutory authority to extend the small entity fee to examination prioritization, but points out that such authority is contained in the patent reform legislation passed by the Senate (S. 23) and pending in the House (H.R. 1249).

To read the Federal Register notice, click here.

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Federal Court Hears Myriad Gene Case This Morning

Posted on April 5, 2011 by Warren Woessner

The following is a guest post from Ann McCrackin.

I attended oral arguments at the CAFC on Monday for Association for Molecular Pathology v. Myriad Genetics, Inc.   The three-judge panel included Judge Bryson, Judge Lourie and Judge Moore.  Most of the questions came from Judges Bryson and Moore.  The arguments were directed to three issues:  jurisdiction, patent eligibility of the composition-of-matter claims, and patent eligibility of the method claims.

Myriad’s attorney, Gregory Castanias, argued that there was no case or controversy for declaratory judgment jurisdiction.  Judge Moore seemed troubled that the District Court’s standing criteria would allow consumers to challenge patents just because they desired a cheaper product.  On the merits, Castanias argued that  isolated DNA is structurally distinct from naturally occurring DNA and therefore does not exist in nature.  Judge Bryson asked whether Myriad’s claims would cover the entire human genome.  Judge Moore noted that the claims do not cover the entire chromosome, but wanted to know how isolated DNA is different from a mineral which is extracted from a rock.   Judge Lourie noted that a gene is structurally different when it is isolated, but a mineral is not structurally different when it is removed from the rock.  Castanias also argued that the method claims are patent-eligible, but was questioned by Judge Lourie regarding whether the steps of “comparing” in the claims were just a thought process.  Castanias also mentioned the Federal Circuit’s post-Bilski decision in RCT v. Microsoft.

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One Step Towards an EJC Decision on the Patentability of Embryonic Stem Cells in Europe

Posted on March 31, 2011 by Warren Woessner

The following is a contribution from Verena Simpson PhD of Zacco Denmark A/S.

On the 10 March 2011, the Advocates General of the European Court of Justice [ECJ] gave an opinion on the interpretation of Article 6(2)(c) of the Directive 98/44/EC. This opinion concerns the patentability of embryonic stem cells, as summarized below:

  • The concept of the human embryo starts from the fertilized embryo and extends through to the development of the human body. Manipulation of an unfertilized human ovum that results in a totipotent cell(s) capable of developing into a human is also to be considered a human embryo.
  • Pluripotent embryonic stem cells do not themselves have the capacity to develop into a human being, and on these grounds are not included within the meaning of “the concept of the human embryo”;
  • However, not only “the use of human embryos for industrial or commercial purposes” must be excluded from patentability, but also inventions whose practise necessitates the prior destruction of human embryos or their use as starting material must be excluded from patentability.

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