According to an article on Law360, Bristol-Myers Squibb Co. is challenging the validity of two Genetic Technologies Ltd. patents on the basis that the claimed intron sequence analysis methods recite natural phenomena that do not satisfy the patent-eligibility requirements of 35 USC § 101. This case highlights some of the questions left unanswered by the Supreme Court decisions in Prometheus and Myriad.
Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of patent eligibility jurisprudence. Viewed in that light, this case could reflect the court’s confidence with at least the “abstract idea” category of § 101 issues, at least in the context of computer-implemented method claims for performing conventional mental steps. Continue reading this entry
In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed the district court’s finding that the patent at issue was invalid because of a defective priority claim. While practitioners may cringe at the apparent clerical error underlying the decision, the USPTO’s new requirement that priority claims be included in an Application Data Sheet may safeguard future patents from this pitfall. Continue reading this entry
A year after its “Roundtable on Proposed Requirements for Recordation of Real Party-in-Interest Information Throughout Application Pendency and Patent Term,” and six months after the White House Task Force on High-Tech Patent Issues made requiring patent applicants and owners to regularly update ownership and “ultimate parent entity” information one of its key initiatives, the USPTO has published proposed real party in interest patent rules, under the title “Changes To Require Identification of Attributable Owner.” The proposed rules would require disclosure of patent ownership information during and after patent prosecution and during any Patent Trial and Appeal Board proceedings. Written comments on the proposed rules are due by March 25, 2014, and the USPTO “intends to hold two stakeholder input meetings” which will be open to the public between now and then. Continue reading this entry
In Medtronic, Inc. v. Mirowski Family Ventures, LLC, a unanimous Supreme Court held that the patent holder bears the burden of proving infringement, even in a declaratory judgment action brought by a licensee. In reaching its decision, the Court dismissed concerns that it would skew the balance of power between patent holder and licensee, noting that, at least in this case, the patent holder instigated the dispute by asserting that new products were covered by the license. The Court justified its decision as striking the right “balance” between patent holder rights and the public interest in limiting patents to their legitimate scope.