Patents4Life | Biotechnology Patent Law Blog

In re NuVasive, Inc. – Explain Yourself!

Posted on December 12, 2016 by Warren Woessner

In re NuVasive Emphasizes the Importance of Reasoning in the Obviousness Question.

Since KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness – that the prior art must provide a teaching, suggestion or motivation (TSM) to combine references so as to arrive at the claimed invention. Since then, it is my opinion that reliance on secondary considerations to support obviousness determinations has steadily increased. Such considerations include unexpected results, long-felt need, failure of others, teachings away from the invention, commercial success and the like. Likewise, Examiners have increased their reliance on factors such as common sense and routine optimization.

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USPTO Holds First Roundtable on “Subject Matter Eligibility Guidelines”

Posted on November 16, 2016 by Warren Woessner

On November 14^th, the PTO hosted a roundtable discussion in Alexandria on s. 101 issues in which both industry reps and practitioners were invited to dissect the current Office guidelines. The structure was unique as there were 33 invited speakers [I was one of them] compressed into 3.75 hours. We each had about 6 minutes to address three PTO representatives, including Robert W. Bahr, Deputy Director for Examination Policy, who has been signing off on the recent memorandums on examination policy. There was a representative from the solicitor’s office and another gentleman whose name was not audible from where I was sitting [seats were assigned based on the order of the presentations, and I was in the bleachers.] The speakers addressed all areas of technology affected by the rise of section 101.

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PTO Schedules s. 101 Roundtables

Posted on November 8, 2016 by Warren Woessner

At 81 Fed. Reg. 71485, The PTO has scheduled two roundtables at the PTO to receive feedback from the IP community, particularly on the Examples that were promulgated in May. The first roundtable will be on November 14^th from 1:00-5:00 PM in the Madison Auditorium. I will be doing a brief presentation along with just about everyone else who has been caught up in the patent subject matter eligibility debate/analysis, particularly in the life sciences.

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Posted in Patent Eligible Subject Matter, USPTO Practice and Policy | Leave a comment

Patent Office Releases Comments on Standards for Patent Eligibility Examination

Posted on November 4, 2016 by Warren Woessner

On November 2^nd, Robert Bahr released a concise but informative memorandum that could be entitled “What We Learned From McRO and BASCOM.” I have posted on McRO, Inc. dba Planet Blue v. Bandi Namco Games America Inc. et al., 120 USPQ2d 1091 (Fed. Cir. 2016), most recently on Sept. 16^th, and I refer you to that post for details of the animation software in question. BASCOM Global Internet Services v. AT&T Mobility LLC, 827 Fed. Cir. 1341 (Fed. Cir. 2016) involved software claims for filtering content received from an Internet computer network. In McRO, the Fed. Cir. found that the claims in question were not directed to an abstract idea. In BASCOM, the Fed. Cir. discussed the requirements for the elusive “inventive concept” required by the Mayo/Alice test.