USPTO Issues Final Patent Term Adjustment Rules Under Novartis

The USPTO has published final Patent Term Adjustment (PTA) rules addressing the treatment of Requests for Continued Examination (RCEs) under the Federal Circuit decision in Novartis v. Lee, which I discussed here. The final rules create a new type of deduction for “Applicant delay” that will apply to applications in which an RCE is filed on or after March 10, 2015.   Continue reading this entry

Federal Circuit Finds "Classic" Reissue Error

In Fleming v. Escort Inc., the Federal Circuit noted that the error on which Fleming’s reissue patents were based was a “classic” type of error justifying reissue: the inventor’s failure to appreciate the full scope of his invention, and the inadequacy of the original claims. This case also addresses issues under 35 USC § 102(g), which remains relevant for most patents in force today. Continue reading this entry

Three Patent Issues To Watch In 2015

Well, 2014 was a busy year in patent law, and it wasn’t all good news for patent holders. The Supreme Court made 35 USC § 101 a significant hurdle to patenting inventions across a broad swath of technologies (see my post on the Alice decision here), gave more teeth the definiteness standard of 35 USC § 112 (see my post on the Nautilus decision here) and did not resolve the divided infringement problem (see my post on the Akamai decision here). For its part, the Federal Circuit expanded the reach of the doctrine of obviousnesss-type double patenting, invalidated antibody claims defined functionally, scrutinized evidence of unexpected results, and questioned whether post-filing date evidence can be used to support non-obviousness. Now that all that is behind us, here are the biggest issues that I expect to be watching in 2015. Continue reading this entry

Federal Circuit Invalidates Myriad Primer And Method Claims As Lacking Subject Matter Eligibility

In a case styled as In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation (also known as Myriad v. Ambry), the Federal Circuit held four of Myriad’s “primer” claims and two of Myriad’s detection method claims invalid for lack of subject matter eligibility under 35 USC § 101. The timing of this decision–coming two days after the USPTO’s Interim Guidance on subject matter eligibility which led many of us to believe that biotechnology inventions could be patented once again–makes it tempting to refer to the Federal Circuit as the Grinch Who Stole Christmas. But while the Grinch changed his mind just in time, it may take Congressional action before diagnostic and personalized medicine innovators have reason to celebrate.

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USPTO Finally Issues New Guidance On Patent Subject Matter Eligibility

The USPTO has issued new “Interim Guidance” for determining whether claims are eligible for patenting under 35 USC § 101. Although the new guidance technically applies to all technologies and all types of claims, Applicants with claims involving natural products will find the most to like about the USPTO’s revised position on subject matter eligibility. The Interim Guidance supersedes the March 4, 2014 guidance issued under the Supreme Court decisions in Myriad and Mayo, and  supplements the June 25, 2014 preliminary guidance issued after the Supreme Court decision in Alice Corp. v. CLS Bank. Continue reading this entry