USPTO Eases Requirements For Track I Prioritized Examination

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

District Court Doubts Patent Eligibility Of Myriad BRCA Claims

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.

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Five Things You Should Know About The USPTO Patent Subject Matter Eligibility Guidelines

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

Federal Circuit Finds Easy Solution To Avodart Solvate Written Description Question

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

Do Pharmaceutical Compositions Have Patent Subject Matter Eligibility Under The New USPTO Guidelines?

The USPTO’s new patent subject matter eligibility guidelines  (the “Guidelines”) include examples that apply the multi-factored analysis mandated by the Guidelines to compositions that include one or more “natural products” as a component. Do these examples indicate that pharmaceutical compositions with an active ingredient that can be obtained from a natural source no longer can be patented? Continue reading this entry