Comments On Patent Subject Matter Eligibility Guidance Due By July 31

This week brings the July 31, 2014 deadline for submitting written comments on two USPTO patent subject matter eligibility guidance documents: The “Myriad-Mayo” Guidance issued March 4, 2014 (for claims involving laws of nature, natural phenomena, and natural products) and the “Alice Corp. v. CLS Bank” Guidance issued June 24, 2014 (for claims involving abstract ideas). These guidance documents make clear that patent applications in all technology areas could be subject to scrutiny under 35 USC § 101, so stakeholders may not want to miss this opportunity to weigh in on how the USPTO should interpret and apply the Supreme Court decisions in MayoMyriad and Alice Corp.
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Federal Circuit Says Commission Must Toe The Line In Invisalign ITC Case

In Align Technology, Inc. v. International Trade Commission, the Federal Circuit held that ITC action that violated ITC’s own regulations warranted vacatur under the Administrative Procedures Act. While the case addresses specific ITC regulations, the same principles apply to other agencies, including the USPTO. Thus, the USPTO should take note of this decision, and take care to follow its own regulations, including those relating to the new patent trial proceedings conducted by the Patent Trial and Appeal Board.

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How Long Is Too Long (Or Too Short) For Patent Application Pendency?

The USPTO is requesting input on the “optimal” targets for its patent application pendency metrics. The USPTO’s current targets are 10 months to a first Office Action and 20 months to grant or abandonment. The USPTO wants to know if you think these targets too long, too short, or just right, and will consider written comments received by September 8, 2014. Continue reading this entry

Why Are Method Of Treatment Claims And Method Of Manufacture Claims Subject To Scrutiny Under The USPTO Patent Subject Matter Eligibility Guidance?

The USPTO has asked for written comments on its patent subject matter eligibility guidance by July 31, 2014. In this article, I discuss why therapeutic method claims and method of manufacture claims should not be subject to scrutiny under the USPTO’s multi-factored § 101 analysis. Continue reading this entry

Federal Circuit Holds That Even Functional Claims Require Structural Fence Posts

In AbbVie Deutschland Gmbh v. Janssen Biotech, Inc., the Federal Circuit affirmed the district court decision that found AbbVie’s patents directed to anti-IL-12 antibodies invalid for lack of adequate written description. As between the parties, this decision leaves Centocor free to market its Stelara® product for the treatment of psoriasis. More generally, this decision emphasizes the importance of describing structurally varied species of a genus invention, even when the invention is defined  by functional characteristics.

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