In the wake of the Supreme Court oral arguments in the Myriad “gene patent” case, most commentators are predicting that the Court will uphold the patent-eligibility of non-naturally occurring DNA sequences (such as cDNA), but will decide that even “isolated” forms of naturally occurring DNA cannot be patented under 35 USC § 101. I have heard some say that such a decision would “harmonize” U.S. patent law with European patent law, but that is not correct.
Now that we have made it past the March 16, 2013 effective date of the first-inventor-to-file provisions of the America Invents Act, it is time to turn our attention to Australia, and the April 15, 2013 effective date of the Intellectual Property Laws Amendment (Raising the Bar) Act.
The USPTO and other patent offices around the world are studying the feasibility of the international harmonization of patent laws. As part of this initiative, the USPTO is soliciting stakeholders views on four key issues: (1) the grace period; (2) eighteen month publication; (3) the treatment of conflicting patent applications; and (4) prior user rights. As set forth in a recent Federal Register Notice, stakeholders can provide their views by answering an on-line questionnaire and by participating in a public hearing that will be held at the USPTO’s Alexandria, Virginia campus on March 21, 2013.
In a decision issued November 2, 2012, the Intellectual Property Appellate Board of India (IPAB) determined in a post-grant opposition proceeding that Roche’s patent covering its Pegasys® (pegylated interferon alfa-2a) product for the treatment of Hepatitis C, is invalid as obvious. The IPAB determined that an NGO had standing to challenge the patent, and cited U.S. case law, including KSR, in support of its decision.Continue reading this entry
As of July 2, 2012, third parties can submit “observations” in published PCT applications via the ePCT Public Service system. It is interesting to compare this service with the expanded ability of third parties to make Preissuance Submissions under new 35 USC § 122(e) (created by the America Invents Act), which takes effect on September 16, 2012. As with that program, only time will tell how many third parties will make the effort to bring potentially relevant prior art to the attention of patent examining authorities. Continue reading this entry
As of January 1, 2012, PCT applicants can request that the International Bureau (IB) publish information indicating that their applications are available for licensing. WIPO will make the information available on its PATENTSCOPE website, but it will not be published with the PCT application itself. According to the announcement in the December 2011 PCT Newsletter, the new program is designed to promote licensing. Continue reading this entry
Pharmaceutical inventions usually require human clinical testing in order to obtain regulatory approval to market the new product. Often a patent application is filed before the invention undergoes human testing, but sometimes a human clinical trial may be started—or even completed—first. While U.S. patent law provides that a “public use” of the invention within the U.S. can constitute prior art, a clinical trial often does not qualify as prior art, either because it was not “public” (e.g., it was conducted under confidentiality) or it qualifies as an “experimental use.”
Practitioners familiar with European patent law know that the EPO takes a stricter view of prior art than the U.S. in many ways, applying an absolute novelty standard with no grace period. Still, a recent decision by the EPO Technical Board of Appeal (T0007/07) finding that a human clinical trail constituted invalidating prior art is striking. Continue reading this entry
I know that the USPTO is busy studying the America Invents Act and drafting its implementing regulations, but it is disappointing that nothing has been done to address the inefficiencies of the current Information Disclosure Statement (IDS) rules. This inaction is even more egregious now that the Trilateral Patent Offices (EPO, JPO, USPTO) have launched the Common Citation Document Application (CCD) to provide easy access to references identified in search reports.
The Australian Patent Office (IP Australia) recently implemented changes to its examination procedures for divisional applications that are designed to promote “prompt resolution” of their status, “particularly where the claimed subject matter of the divisional application is the same as its parent.” While resolving uncertainty is an important goal, the new procedures add a new layer of complexity that may hit non-Australian applicants particularly hard.
European patent applications filed on or after January 1, 2011 will be subject to a new disclosure requirement designed to support international worksharing efforts. The new rule will require applicants to submit copies of search results received from the national patent office of the priority country (the Office of First Filing, or OFF). Failure to comply with the new requirement can result in abandonment of the European patent application, but the EPO plans to implement steps to facilitate compliance.