The USPTO Is Off-Key With International Patent Law Harmonization

As a leader in science, technology and innovation, the United States long has played a central role in global intellectual property matters. As the world’s largest economy, the United States has played a central role in trade policy, including its role in setting up the TRIPS agreements that made intellectual property rights a precondition for joining the WTO. The USPTO is continuing this leadership role by hosting a Roundtable on the international harmonization of substantive patent law on November 19, 2014, but it should look at its own practices that keep the United States out of harmony with other major national patent offices.

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Third Time Is The Charm For WildTangent Challenge Of Patent Eligibility Of Ultramercial Patent

In its third opinion reviewing the same district court decision, the Federal Circuit this time affirmed the district court’s grant of WildTangent’s motion to dismiss Ultramercial’s patent infringement complaint because the claims at issue fail to satisfy 35 USC § 101. The Federal Circuit applied the analytical framework set forth in the Supreme Court decision in Alice Corp. v. CLS  Bank, and determined that the claims are directed to non-patent eligible abstract ideas. In his concurrence, Judge Mayer explains his view that the presumption of validity does not attach to § 101 issues, and that only ”technological”–not “entrepreneurial”–methods are patent eligible under Alice. Continue reading this entry

USPTO Explores Crowdsourcing Prior Art

In a Federal Register Notice dated November 12, 2014, the USPTO solicited public comments on the “use of crowdsourcing to identify relevant prior art,” and announced a related roundtable to be held on December 2, 2014 at the Benjamin N. Cardozo School of Law, in New York, NY. (The November 2014 Federal Register Notice and December roundtable follow a March 2014 Federal Register Notice and April 2014 roundtable.) This is another initiative that stems from White House executive actions aimed at “strengthening” the U.S. patent system. Continue reading this entry

Federal Circuit Looks For Inventive Concept In Sequenom Patent

On November 7, 2014, the Federal Circuit heard oral arguments in Aria Diagnostics, Inc. v. Sequenom, Inc., where Sequenom is appealing the district court’s summary judgment of invalidity under 35 USC § 101. The active questioning by the judges suggests that they are wrestling with how to apply the Supreme Court’s decision in Mayo to different types of inventions.  Continue reading this entry

District Court Finds Genetic Technologies Patent Invalid Under 101 On Motion To Dismiss

Judge Stark of the U.S. District Court for the District of Delaware granted defendants’ motion to dismiss Genetic Technologies, Ltd.’s patent infringement suit with regard to claim 1 of U.S. Patent 5,612,179 on the basis that the claimed sequence analysis method is invalid under 35 USC § 101 because it merely applies conventional methods to a natural phenomenon. Judge Stark’s opinion draws on recent Supreme Court and Federal Circuit decisions, and shines a light on the difficulties biotechnology patents can face under Mayo, Myriad and Alice. If this case is appealed to the Federal Circuit, will it find that Judge Stark when astray in the analysis that led to the finding of ineligibility? Continue reading this entry