The Patent Value Problem and the Case for Design-Around

Guest post from Edward Sandor.

We’ve become, to our detriment, a society that purposefully closes its eyes to patents. We’re collectively not doing enough to avoid adoption of patents on average inventions, and by not avoiding them, we’re unjustly building their value. 

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USPTO Announces Program to Eliminate Filing Fees in Exchange for Early Publication of COVID-19 Applications

Since all the other commentators are posting about this Notification, I thought I should say a few words as well. The USPTO will eliminate the filing fees for applicants who agree to publish their COVID-19-related provisional applications in a PTO-managed database. The applications must be directed to FDA-approvable therapies, devices and the like. While the stated goal of rapid dissemination of information about improved compositions/devices related to COVID-19 is a worthy one, the incentives are really not there. The filing fee for a provisional application are not that high (soon to be $300 for a large entity) and the risk of early publication being treated as prior art against applications, e.g., claiming advances,  in the original inventions both in the US and in foreign patent offices is substantial. Also, early dissemination of advances in the detection or treatment of COVID-19 seems to be the norm these days, since it can drive stock prices. I think that the PTO should put more on the table. How about offering free accelerated examination to qualifying regular applications? This rather complex program is still in effect and could be streamlined further, as by eliminating the requirements to supply the strategies and results of a prior art search or, at least, to supply an analysis of the closest prior art located by the search.  See MPEP 708.02(a).

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XY, LLC v. Trans Ova Genetics, Inc. – Building on Illumina v. Ariosa

In XY v. Trans Ova Genetics, Inc., Appeal No. 2019-1789 (Fed. Cir. July 31, 2020), a panel of Wallach, Plager and Stoll reversed the district court’s finding that claims to an improved method of cell sorting are patent ineligible under s. 101. The main claim of RE46,559 reviewed was an eight step process using flow cytometry to improve the separation of male determining cells,  from female determining cells (“X from Y bearing sperm”), “an application useful in animal husbandry to ‘guarantee the sex of the offspring.’” I won’t reproduce claim 1, which is about two pages long, and begins: A method of operating a flow cytometry apparatus with at least n, [e.g.,2] detectors to analyze at least two populations of particles in the same sample. As described by the panel: “The claimed methods increase spatial separation of data corresponding to each population at least ‘by rotationally alter[ing] the n dimensional parameter data…For example, embodiments of the claimed ‘invention may involve rotating data to increase a separation of data from male-determining cells to female determining cells.’”

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Fed. Cir. Panel Holds that Judge Dyk Erred in Construction of Antibody Claims

Recently, in the appeal of a noninfringement opinion by Judge Dyk, riding circuit in D. Del., a three Judge panel of Judges Moore, Plager and Wallach held that Judge Dyk erred in his overly narrow construction of the claim terms “antibody” [Ab] and “antibody fragment”. Baxalta v. Genentech, Appeal No. 2019-1527 (Fed. Cir., August 27, 2020). Judge Dyk had construed the claims of U.S. Pat. No. 7,0333,590 that covered the hemophilia drug Hemlibra® using a “generalized introduction to antibodies” in the specification to limit the claim terms “antibody” and “antibody fragment”. Claims 1 and 4 read as follows:

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