On July 24, 2017, the USPTO issued a 48-page report on Patent Eligible Subject Matter. The report summarizes key court decisions interpreting and applying 35 USC § 101, international views on eligible subject matter, and public comments and recommendations for addressing recent changes in this foundational issue of U.S. patent jurisprudence. While some have criticized the USPTO … Continue reading this entry Tags: Eligibility,Subject Matter Eligibility
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 Tags: Eligibility,Patent Eligibility,Subject Matter Eligibility
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 Tags: Eligibility,Intema,Myriad
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 Tags: Eligibility,Mayo,Personalized Medicine,Prometheus
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 Tags: America Invents Act (AIA),Eligibility,Human Organism
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 Tags: 101,ACLU,Association For Molecular Pathology,BRCA,Breast Cancer,DNA,Eligibility,Funk Brothers,Gene,Isolated,Myriad
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 Tags: 101,Eligibility,Mayo,Personalized Medicine,Prometheus
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 Tags: 101,Eligibility,Metabolite,Personalized Medicine