Category Archives: International Patent Practice

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EPO Stays Proceedings Over Patentability Of Plants And Animals

While the U.S. is still sorting out “natural products” jurisprudence under 35 USC § 101, the European Patent Office (EPO) is wrestling with the patentability of plants and animals, and has announced an immediate stay on all patent examination and opposition proceedings in which the outcome “depends entirely on the patentability of a plant or animal obtained … Continue reading this entry

Advancing New Claims Under the Lanham Act

Implementing unique litigation tactics, on June 15, 2016, Foley & Larder LLP filed a complaint under Section 337 of the Tariff Act at the International Trade Commission (“ITC”) on behalf of Par Pharmaceutical and related parties (Par as “Complainants”).  The complaint, which is grounded in allegations of the unlawful importation of certain Potassium Chloride powder … Continue reading this entry

Australian Patent Office Provides Patent Eligibility Guidance

The Australian Patent Office (IP Australia) has issued final patent eligibility guidance under the Australian High Court’s decision in D’Arcy v. Myriad Genetics, Inc. Where the USPTO extrapolated from the U.S. Supreme Court decision when it promulgated its patent eligibility guidance, IP Australia seems to have taken a more conservative approach. This means that despite similar rulings against … Continue reading this entry

Australia High Court Rules Against Gene Patents

Colleagues in Australia have been spreading the bad news: The High Court of Australia followed the lead (?) of the U.S. Supreme Court and determined that Myriad cannot patent the isolated BRCA1 gene in Australia. Thanks to Adam Denley, Ph.D., Senior Associate at Freehills Patent Attorneys, for providing the article below on the October 6, 2015 decision … Continue reading this entry

Improving Patent Quality With International Collaborative Search Pilot Programs

The USPTO has launched two new programs aimed at improving patent quality by joining forces with the Japanese Patent Office (JPO) or the Korean Intellectual Property Office (KIPO) at the initial stages of the patent examination process. The JPO pilot program seems the most likely to have an impact on examination, but the USPTO will be … Continue reading this entry

The Confused USPTO Policy On Certified Copies Of Patent Applications

Obtaining certified copies of patent applications can be essential to perfecting a priority claim. But when a U.S. priority application contains a sequence listing, USPTO practices make it difficult to satisfy this requirement. While there is a work-around, it is cumbersome and potentially costly. The USPTO can solve this problem, but will it?… Continue reading this entry

The USPTO Is Off-Key With International Patent Law Harmonization

As a leader in science, technology and innovation, the United States long has played a central role in global intellectual property matters. As the world’s largest economy, the United States has played a central role in trade policy, including its role in setting up the TRIPS agreements that made intellectual property rights a precondition for joining … Continue reading this entry

Australia Upholds Patent Eligibility Of Isolated DNA

Thanks to Adam Denley, Ph.D., Senior Associate at Freehills Patent Attorneys in Australia, for alerting me to the September 5, 2014 decision of the Full Federal Court of Australia upholding the patent eligibility of isolated nucleic acids, and for letting me share his initial summary here.… Continue reading this entry

The USPTO Patent Subject Matter Eligibility Guidance TRIPS Over Treaty Requirements

With thanks to my colleague Dr. Christopher Swift for his expert advice on the intersections of US and international law. The “Myriad-Mayo” patent subject matter eligibility guidance issued March 4, 2014 reflects the USPTO’s interpretation of Supreme Court cases interpreting and applying 35 USC § 101 to claims involving laws of nature, natural phenomena, and natural products, but the … Continue reading this entry

Do The USPTO 101 Guidelines Violate International Trade Agreements?

One advantage of being a blogger in the relatively small world of patents is that I have gotten to know practitioners in other countries who also have a keen interest in patent law. One such person is Australian Registered Patent Attorney Mark Summerfield, who blogs at Patentology. I enjoyed his article on the new USPTO … Continue reading this entry

The Danger Of Self-Colliding Divisional Applications In The EPO

Last week I had the honor of speaking at the 27th Annual Pharmaceutical/Chemical Patent Practice Update put on by the New Jersey Intellectual Property Law Association’s Chemical Practice Committee. The entire program was fantastic, but one presentation that got a lot of attention was by Matthew Fletcher, a partner at Abel & Imray in London, on the … Continue reading this entry

It's Back To The Future For The EPO Divisional Application Deadline Rules

The EPO has announced that it is changing the EPO divisional application deadline rules to eliminate the current 24-month deadline for filing divisional applications, and permit the filing of a divisional application as long as the parent application still is pending. The change will apply to divisional applications filed on or after April 1, 2014.… Continue reading this entry

Dispelling The Myriad Gene Patent Harmonization Myth

In the wake of the Supreme Court oral arguments in the Myriad “gene patent” case, most commentators are predicting that the Court will uphold the patent-eligibility of non-naturally occurring DNA sequences (such as cDNA), but will decide that even “isolated” forms of naturally occurring DNA cannot be patented under 35 USC § 101. I have … Continue reading this entry

Australia’s April 12 Deadline For Raising The Bar

Now that we have made it past the March 16, 2013 effective date of the first-inventor-to-file provisions of the America Invents Act, it is time to turn our attention to Australia, and the April 15, 2013 effective date of the Intellectual Property Laws Amendment (Raising the Bar) Act.… Continue reading this entry

International Harmonization Of Patent Laws

The USPTO and other patent offices around the world are studying the feasibility of the international harmonization of patent laws. As part of this initiative, the USPTO is soliciting stakeholders views on four key issues: (1) the grace period; (2) eighteen month publication; (3) the treatment of conflicting patent applications; and (4) prior user rights. … Continue reading this entry

India IP Board Invalidates Roche Hepatitis C Patent, Cites KSR

In a decision issued November 2, 2012, the Intellectual Property Appellate Board of India (IPAB) determined in a post-grant opposition proceeding that Roche’s patent covering its Pegasys® (pegylated interferon alfa-2a) product for the treatment of Hepatitis C, is invalid as obvious. The IPAB determined that an NGO had standing to challenge the patent, and cited U.S. case law, … Continue reading this entry

Third Party Observations Now Permitted In PCT Applications

As of July 2, 2012, third parties can submit “observations” in published PCT applications via the ePCT Public Service system. It is interesting to compare this service with the expanded ability of third parties to make Preissuance Submissions under new 35 USC § 122(e) (created by the America Invents Act), which takes effect on September … Continue reading this entry

WIPO To Publish Information On PCT Applications Available For Licensing

As of January 1, 2012, PCT applicants can request that the International Bureau (IB) publish information indicating that their applications are available for licensing. WIPO will make the information available on its PATENTSCOPE website, but it will not be published with the PCT application itself. According to the announcement in the December 2011 PCT Newsletter,  the … Continue reading this entry

Clinical Trial Invalidates European Patent

Pharmaceutical inventions usually require human clinical testing in order to obtain regulatory approval to market the new product. Often a patent application is filed before the invention undergoes human testing, but sometimes a human clinical trial may be started—or even completed—first. While U.S. patent law provides that a “public use” of the invention within the … Continue reading this entry

Will The USPTO Use The New CCD Tool To Lessen The IDS Burden?

I know that the USPTO is busy studying the America Invents Act and drafting its implementing regulations, but it is disappointing that nothing has been done to address the inefficiencies of the current Information Disclosure Statement (IDS) rules. This inaction is even more egregious now that the Trilateral Patent Offices (EPO, JPO, USPTO) have launched … Continue reading this entry

IP Australia Complicates Divisional Application Prosecution

The Australian Patent Office (IP Australia) recently implemented changes to its examination procedures for divisional applications that are designed to promote “prompt resolution” of their status, “particularly where the claimed subject matter of the divisional application is the same as its parent.” While resolving uncertainty is an important goal, the new procedures add a new layer … Continue reading this entry

New Duty of Disclosure for European Patent Applications

European patent applications filed on or after January 1, 2011 will be subject to a new disclosure requirement designed to support international worksharing efforts. The new rule will require applicants to submit copies of search results received from the national patent office of the priority country (the Office of First Filing, or OFF). Failure to comply with … Continue reading this entry