Tag Archives: Mayo

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 … Continue reading this entry

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

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

Deja Vu All Over Again In Federal Circuit's August 16 Myriad Decision

On August 16, 2012, just four weeks after it heard oral arguments, the Federal Circuit issued its second decision in Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU ”gene patenting”/BRCAI case), which was on remand in view of the Supreme Court’s March 20, 2012 decision in Mayo v. Prometheus. The same three-judge panel heard the … Continue reading this entry

Federal Circuit To Hear Oral Arguments In Myriad Remand Today

Later today the Federal Circuit will hear 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. In advance of today’s hearing, the Federal Circuit asked for briefing on the following issue: What is the applicability … Continue reading this entry

Eli Lilly Suggests Bright-Line Rule In Myriad Amicus Brief

Eli Lilly filed an interesting amicus brief in the remand of Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU ”gene patenting”/BRCAI case). The Lilly brief focuses on claim 20 of Myriad’s U.S. Patent 5,747,282, and urges the Federal Circuit to adopt a bright-line rule that would hold any method claim that includes a step … Continue reading this entry

The United States Files Its Amicus Brief In Myriad

The briefs in the remand of Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU ”gene patenting”/BRCAI case) were due last Friday, June 15, 2012. While the views of the parties and other amici may be of interest to the Federal Circuit, I am particularly interested in the position taken in the U.S. Department of … 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

Supreme Court To Hear Oral Arguments In Two Important Cases This Week

This week the Supreme Court will hear oral arguments in two cases that are important to the pharmaceutical industry: (i) Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S and (ii) Mayo Collaborative Services v. Prometheus Laboratories, Inc.… 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

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