Putting Structure And Function Into Context For USPTO Patent Subject Matter Eligibility Guidance

The USPTO’s ”Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products” has been criticized for requiring a product to be markedly different in structure from a product of nature in order to be eligible for patenting, even though the Supreme Court has considered both structure and function when evaluating the eligibility of a product derived from nature.  When questioned on this issue, PTO representatives admitted their difficulty understanding that a product could have a different function without having a different structure, and specifically asked the public to provide examples of such phenomena within the July 31, 2014 public comment period. How many examples can we provide where the function of a compound depends on the context?

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Federal Circuit Looks For A Different Kind Of Unexpected Results In BMS v. Teva

In Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit affirmed the district court’s finding that BMS’s Baraclude® patent is invalid as obvious. In so doing, the court gave little weight to unexpected results characterized as reflecting a difference in “degree” rather than a difference in “kind.” This decision joins other recent Federal Circuit decisions that have found unexpected results to be not unexpected enough to prevail against a strong showing of prima facie obviousness.  Continue reading this entry

USPTO Asks For Patent Subject Matter Eligibility Comments By July 31, 2014

In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014  on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International and on the USPTO’s March 4, 2014 “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products.” While some have speculated that the USPTO eventually may issue a single guidance document for all types of subject matter, the Federal Register Notice provides separate points of contact for comments relating to the eligibility of claims involving abstract ideas (under Alice) and those involving laws of nature or natural products (under Mayo and Myriad). Continue reading this entry

District Court Upholds FTC Hart-Scott-Rodino Rules for Pharmaceutical Patent Transfers

A federal court has upheld the validity of the FTC’s recent rules for reporting certain transfers of exclusive patent rights in the pharmaceutical industry under the Hart-Scott-Rodino Antitrust Improvements (“HSR”) Act. We explained these Hart-Scott Rodino rules back in November when the FTC announced them, but note here that these rules require that an HSR filing be made for transfers of exclusive patent rights constituting “all commercially significant rights” in the pharmaceuticals sector that meet the other HSR criteria. A pharmaceuticals trade association challenged these regulations under the Administrative Procedures Act. On May 30, the court issued a seventy-page opinion rejecting this challenge and keeping the FTC’s rules intact and in full force. Continue reading this entry

How The Supreme Court Decision In Alice Corp. v. CLS Bank Undermines The USPTO Subject Matter Eligibility Guidance

On June 19, 2014, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International, finding that patents directed to “a computer-implemented scheme for mitigating ‘settlement risk’” were invalid as being drawn to a patent-ineligible abstract idea. Although the Court did not address patent claims relating to laws of nature or natural phenomena, the decision undermines the USPTO’s Subject Matter Eligibility Guidance for such claims by showing that the USPTO’s approach is contrary to the Supreme Court’s guiding principles. Continue reading this entry