While the patent eligibility of diagnostic method claims remains questionable in the United States, the Canadian Intellectual Property Office has issued updated guidance on the types of diagnostic method claims that can–and cannot–be patented in Canada. Since most stakeholders in this field pursue patent protection internationally, it can be important to know the standards that will be applied in different jurisdictions. Continue reading this entry
While Congress is trying to pass a tax reform bill that would cut corporate taxes, USPTO patent fees will increase effective January 16, 2018. The 72% jump in the Inter Partes Review request fee has gotten the most attention, but a number of prosecution fee increases are notable. As stakeholders consider the impact these higher USPTO fees will have on their intellectual property budgets, they can try to be thankful that the fees did not take effect with the new fiscal year on October 1, 2017.
As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search results prior to issuing a first office action. As explained in the notice, the CSP is designed to provide examiners with a “more comprehensive set of prior art references to consider when making initial patentability determinations.” The Expanded CSP drops the requirement to participate in the First Action Interview Pilot Program and may be opened up to additional intellectual property offices.
It’s a scary time for intellectual property stakeholders in life science industries. Even if you can get your claims past the batty patent eligibility jurisprudence you still have to fight your way through the old cobwebs of obviousness and enablement. With the constant threat of inter partes review, post grant review, and even covered business method review, your patent rights never rest in peace.
In a non-precedential decision issued in Merck Sharp & Dohme B.V., v. Warner Chilcott Co. LLC, the Federal Circuit reversed the district court’s obviousness ruling as being improperly grounded in hindsight. This decision provides a welcome reminder that even simple-sounding inventions can be nonobvious, but why is it non-precedential?