The USPTO has set up a new web page with resources for examining claims for patent subject matter eligibility, including a link to the slides used in training programs for Examiners in Technology Centers 1600 and 1700. While the slides hew closely to the Guidelines, they include additional commentary and examples that illustrate how the Guidelines might be applied in practice. One new example in particular feeds my concerns about the patent eligibility of pharmaceutical compositions under the Guidelines, and highlights where the USPTO’s interpretation of Supreme Court jurisprudence may have gone awry. Continue reading this entry
In a Federal Register Notice issued March 5, 2014, the USPTO announced interim rules under the Track I prioritized examination program that ease the formal requirements for obtaining Track I prioritized examination of a new application. The eased requirements apply to all Track I requests filed since September 16, 2012 (even if previously rejected) as long as a first Office Action has not yet been mailed. (Applicants with a rejected request that would be accepted under the interim rules will need to file a request for reconsideration.) Continue reading this entry
In a decision issued March 10, 2014, Judge Shelby of the U.S. District Court for the District of Utah denied Myriad’s motion for a preliminary injunction against Ambry Genetics Corp. While Ambry had challenged the validity of the Myriad BRCA claims on several grounds, the district court ruled on the most interesting one–patent eligibility. In particular, the court found that Ambry had “raised a substantial question” whether Myriad’s Primer Claims and Method Claims are directed to “patent [in]eligible products of nature and abstract ideas.” If Myriad does not appeal this decision, it is likely to lose not only its infringement suit against Ambry, but also its pending suits against other accused infringers.
The new USPTO patent subject matter eligibility guidelines set forth a detailed analytical framework for evaluating whether claims satisfy the patent subject matter eligibility requirement of 35 USC § 101. If you are an examiner, patent agent, patent attorney, or applicant overseeing patent portfolios in chemical, biotechnology, or life sciences technologies, you should read and study the Guidelines. (You can start with this summary.) But even if the Guidelines are not likely to impact your daily practice, there are five things you should know about them. Continue reading this entry
Are claims that recite a “solvate” of a chemical compound invalid for lack of written description if the patent does not describe any specific solvates? In GlaxoSmithKline LLC v. Banner Pharmacaps, Inc., the Federal Circuit said No, and upheld the district court’s determination that the defendants had not proven that the claims were invalid. Continue reading this entry