Michelle Lee becomes (Acting) Under Secretary of Commerce for Intellectual Property

Posted on December 12, 2013 by Warren Woessner

Michelle Lee joined the USPTO as Director of the Silicon Valley Patent Office in 2012 (and apparently got her Reg. No. that year), after working as Deputy General Counsel of Google, and at Fenwick & West and Keker & Van Nest. She has a deep technical (EE) and legal background that involves PTO operations insofar as she has also served on the Public Advisory Committee.

Her experience with “Patent Trolls” at Google has caused her to paint herself into an anti-patent position in recent years. I hope she will come to realize that not all NPE’s are extortionists (See links below for reports and comments from forums she has attended.)

Interestingly, she was nominated by Peggy Focarino, the PTO Commissioner  of Patents, to the Secretary of Commerce, who then appointed Michelle to be Deputy Undersecretary of  Commerce for IP. Since there is no Director of the USPTO (as well as no Deputy Director), Michelle will effectively be the Acting Director of the USPTO (I guess)—until a new Director is nominated and confirmed by the Senate. That could be a while, to say the least.

Here are some quotes from Michelle Lee regarding the patent system:

2007:  http://www.theregister.co.uk/2007/08/02/google_calls_for_us_patent_reform/

2007:  http://www.zdnet.com/blog/howell/alwayson-stanford-summit-lawyers-for-google-ibm-and-apple-ponder-the-patent-system/158

2009:  http://googlepublicpolicy.blogspot.com/2009/03/patent-reform-needed-more-than-ever.html

 

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Donald Chisum Monograph: Cert. Grant in CLS Bank: Background and Commentary

Posted on December 11, 2013 by Warren Woessner

This is a guest post from the Chisum Patent Academy and is posted with their permission.

Patents on Computer-Implemented Methods and Systems: The Supreme Court Grants Review (CLS Bank) (Dec. 10, 2013)

The Chisum Patent Academy is pleased to provide you with Donald Chisum’s new 58-page monograph surveying background developments and commenting on the Supreme Court’s grant of certiorari in No. 13-298, Alice Corp. Pty. Ltd. v. CLS Bank Int’l (Dec. 6, 2013).

Chisum concludes:

“The Supreme Court often intervenes to resolve splits among the various courts of appeal. Here a split exists within a circuit that the circuit itself is unable to resolve. The circuit judges’ varying interpretations of a body of recent and not-so-recent Supreme Court precedent riddled with fuzzy language and inconsistent results caused the split. Now, the Court has the opportunity (and the obligation) to clean up a mess that is, to a major extent, of its own making.”

The full monograph is available here.

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Australia – High Court Decision on Methods of Medical Treatment

Posted on December 6, 2013 by Warren Woessner

This is a guest post from Bill Bennett of Pizzeys in Australia. It covers Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (4 December 2013). (A copy of the full decision is available at the end of this post.)

Introduction

The Australian High Court has handed down a 4:1 majority decision confirming that a method of medical treatment can be a “manner of manufacture” (i.e. patentable subject matter).  This is the first time that this issue has been directly considered by the Australian High Court.

Background

Sanofi is the owner of a patent which claims a method of preventing or treating psoriasis by using a compound called leflunomide.

Apotex registered leflunomide on the Australian Register of Therapeutic Goods with the intention of selling it for the purpose of treating rheumatoid arthritis and psoriatic arthritis.  Most persons with psoriatic arthritis either have, or will develop, psoriasis.  Thus, the treatment of psoriatic arthritis will often simultaneously involve the treatment of psoriasis.

Continue reading →

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The Unacknowledged Role of Section 112 in the Myriad Decisions

Posted on November 30, 2013 by Warren Woessner

DNA StrandGuest post from Paul Cole, Lucas & Co., UK; introduction by Warren Woessner.

In this interesting note, Paul Cole explores the possible effect on the Fed. Cir. and Supreme Court’s decisions about the patent-eligibility  of “genomic DNA” of the arguable failure of the claims to meet the written description and enablement requirements of section 112. He also considers whether or not the Court’s ruling ultimately will have any real effect on Myriad’s testing business. Finally, he raises the question of the effect of the decision on progress dependent on work  involving non-human DNA sequences.

A representative Myriad patent considered by the Supreme Court in the above proceedings covered isolated DNA coding for the wild-type BRCA1 gene. However, it disclosed only a partial sequence of the gene and did not disclose its isolation as a free-standing molecule. For those reasons a claim which on reasonable interpretation covered the wild-type gene was open to objection on the grounds of lack of written description and lack of enablement, which objections though not formally in issue were readily apparent to a knowledgeable reader.  (The entire post can be downloaded below.)

MYRIAD GENETICS Rev 3 0

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