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.

Continue reading this entry

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?

Continue reading this entry

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