Tag Archives: Eligibility

USPTO Asks For Patent Subject Matter Eligibility Comments By July 31, 2014

In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014  on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International and on the USPTO’s March 4, 2014 “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural … Continue reading this entry

Update From The May 9, 2014 USPTO Patent Eligibility Guidelines Forum

On May 9, 2014, the USPTO hosted a forum to receive public feedback on the patent subject matter eligibility guidance for examiners circulated on March 4, 2014. The USPTO heard formal presentations from ten speakers (including myself) and comments from audience members. Most speakers suggested alternative approaches to applying the Supreme Court’s “product of nature” and “law … Continue reading this entry

The New USPTO Patent Eligibility Rejections Under Section 101

Well, it’s happening. Office Actions with new patent eligibility rejections based on the USPTO’s March 4, 2014 Guidance are being mailed out to patent practitioners across the nation. While some new rejections under §101 were expected, others have been more surprising. The most frustrating ones I have seen relate to pharmaceutical compositions, methods of making pharmaceutical compositions, … Continue reading this entry

A Look At The Myriad Gene Patent Claims And The USPTO Memo To Examiners On Myriad

Now that the Supreme Court has issued its decision in the “ACLU/Myriad” gene patents case (Association For Molecular Pathology v. Myriad Genetics, Inc.), people are wondering what the decision means for the Myriad patents and BRCA1/BRCA2 genetic testing. If you missed it, this article provides an overview of the Supreme Court Myriad decision. Here, I review … Continue reading this entry

An Update On Patenting Personalized Medicine After Prometheus

While the Supreme Court just granted certiorari in Myriad, case law surrounding the patent-eligibility of diagnostic and therapeutic personalized medicine has continued to develop in the wake of Mayo v. Prometheus. The good news for innovators is that the USPTO is still granting patents in the field of personalized medicine. The bad news is that … Continue reading this entry

Myriad Oral Arguments: Deja Vu?

On Friday, July 20, 2012, the Federal Circuit heard oral arguments in Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU ”gene patenting”/BRCAI case), which is on remand in view of the Supreme Court decision in Mayo v. Prometheus. The courtroom was crowded again, but the mood seemed a bit lighter than the first oral … Continue reading this entry

Who's On First? The Supreme Court Struggles With The Patent-Eligibility Of Personalized Medicine Claims

On December 7, 2011, the Supreme Court heard oral arguments in Mayo Collaborative Services v. Prometheus Laboratories, Inc. While the issue before the Court is patent-eligibility under 35 USC § 101, the arguments veered into the topic of patentability under 35 USC §§ 102 and 103, whether the Court intended to raise that issue or … Continue reading this entry

USPTO Guidance Already Bans Patents On Human Organisms

One of the few patent prosecution-related provisions of the America Invents Act (AIA) that took immediate effect is the ban on patenting human organisms, set forth in Section 33(a) of the AIA: Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.… Continue reading this entry

Federal Circuit Upholds Many Classen Method Claims, Also Limits Reach Of Safe Harbor

On August 31, 2011, the Federal Circuit issued its second decision in Classen Immunotherapies, Inc. v. Biogen Idec, which was on remand from the Supreme Court after Bilski v. Kappos. Judge Newman wrote the opinion for the court, which was joined by Chief Judge Rader, and holds that two of the three asserted patents recite … Continue reading this entry

Myriad Calls ACLU Bluff On Standing

As I wrote yesterday, the ACLU filed a Petition for Panel Rehearing in Association for Molecular Pathology v. USPTO, also known as the ACLU/Myriad “gene patenting” case, alleging factual and legal errors in the court’s July 29, 2011 decision on both the standing issue and the patent-eligibility issue. I was not impressed by the ACLU’s standing … Continue reading this entry

ACLU Files Petition For Panel Rehearing In Myriad

As reported by Kevin Noonan on Patent Docs, plaintiffs-appellees (e.g., the ACLU) have filed a Petition for Panel Rehearing in Association for Molecular Pathology v. USPTO, also known as the ACLU/Myriad “gene patenting” case. The Petition alleges factual and legal errors in the court’s July 29, 2011 decision on both the standing issue and the patent-eligibility … Continue reading this entry

More On Myriad: Judge Moore's Concurrence

I wrote previously on the apparent scientific basis for the differing opinions of Judge Lourie and Judge Bryson on the patent-eligibility of isolated genomic DNA claims in Association for Molecular Pathology v. USPTO. Here, I look at Judge Moore’s concurring opinion, which appears to agree in principal with Judge Bryson’s legal analysis, but places more emphasis … Continue reading this entry

More On Myriad: The Chemical Divide--Judge Bryson

As I wrote previously, one interesting aspect of the recent Federal Circuit decision in Association for Molecular Pathology v. USPTO, is the apparent scientific basis for the differing opinions of Judge Lourie and Judge Bryson on the patent-eligibility of isolated genomic DNA claims. Unlike many concurring and dissenting opinions that are spurred by a different view of the law, Judge Lourie and Judge Bryson also appear to part ways based on different views of the science. In this second part of a three-part series, I focus on the views of Judge Bryson. … Continue reading this entry

More On Myriad: The Chemical Divide--Judge Lourie

One interesting aspect of the recent Federal Circuit decision in Association for Molecular Pathology v. USPTO, is the apparent scientific basis for the differing opinions of Judge Lourie and Judge Bryson on the patent-eligibility of isolated genomic DNA claims. Unlike many concurring and dissenting opinions that are spurred by a different view of the law, Judge Lourie and Judge Bryson also appear to part ways based on different views of the science. In this first part of a three-part series, I focus on the views of Judge Lourie. … Continue reading this entry

Federal Circuit Issues Mixed Decision On Myriad Claims

On July 29, 2011, the Federal Circuit issued its decision in Association for Molecular Pathology v. USPTO, also known as the ACLU/Myriad “gene patenting” case. In a mixed decision, the court held that “isolated DNA” claims are patent-eligible under 35 USC § 101, but that the “comparing” or “analyzing” method claims are not. With a … Continue reading this entry

Supreme Court Grants Cert In Mayo v. Prometheus

Today (June 20, 2011), the Supreme Court granted Mayo’s petition for certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, which means that the Supreme Court will review the Federal Circuit decision that upheld the patent-eligibility of Prometheus’ personalized medicine claims against a Bilski-type challenge. As I wrote last week, it will be interesting to see … Continue reading this entry

Justice Breyer Resurrects Metabolite

Justice Breyer’s dissenting opinion in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. is interesting for more than his views on inventor rights and the Bayh-Dole Act. As I was reviewing it, I was struck by his negative comments about patents and his citation of his own 2006 opinion dissenting from … Continue reading this entry

Federal Circuit Hears Oral Arguments in Myriad

On April 4, 2011, Judges Lourie, Bryson and Moore at the U.S. Court of Appeals for the Federal Circuit heard oral arguments in Association for Molecular Pathology v. USPTO, also known as the ACLU/Myriad “gene patenting” case. This case has garnered extraordinary attention from the biotech, pharmaceutical, and health care industries, from academic and government … Continue reading this entry

Mayo Petitions for Certiorari Against Prometheus

On March 17, 2011, Mayo Collaborative Services filed a petition for certiorari to the U.S. Supreme Court, challenging the Federal Circuit’s December 2010 decision in Prometheus Laboratories, Inc. v. Mayo Collaborative Services. Mayo asserts that the case raises the question “whether a patentee can monopolize basic, natural biological relationships,” and urges the Court to decide … Continue reading this entry

Solicitor General Asks To Argue Myriad on April 4

In an unusual (if not unprecedented) move, the Solicitor General of the United States wrote a letter to the Federal Circuit asking that oral argument in Association for Molecular Pathology v. Myriad Genetics be scheduled for April 4, 2011. The Solicitor General (Neal Katyal) noted that “the United States will file an unopposed motion to participate in … Continue reading this entry

Federal Circuit Upholds Personalized Medicine Claims

The Federal Circuit decided for the second time that the personalized medicine claims at issue in Prometheus Laboratories, Inc. v. Mayo Collaborative Services satisfy the requirements for patent-eligibility set forth in 35 U.S.C. ¬ß 101, even under the Supreme Court's decision in Bilski v. Kappos. In so doing, the court followed a two-part analysis that provides a framework for analyzing other method claims that may raise similar issues. … Continue reading this entry

Testing The Separation Of Powers: Will The Federal Circuit Rule Against The Department Of Justice On The Patent-Eligibility of DNA Claims?

In a move that surprised many in the U.S. patent community, the Department of Justice filed a brief in the Federal Circuit appeal of Association for Molecular Pathology v. USPTO, arguing against the patentability of isolated genomic DNA sequences. This brief may raise the stakes in the appeal, and certainly shines a brighter spotlight on … Continue reading this entry