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The Recent PTO Guidance on Subject Matter Eligibility: Lessons

A few years ago, former PTO Solicitor General Nancy Linck arose from the audience at the BIO International Conference to provide her thoughts on how the Office had responded to the Supreme Court's decisions in Mayo v....more

UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Life Sciences

The United States Patent And Trademark Office (USPTO) issued a memorandum on May 4, 2016 (May 2016 Memo) to the Patent Examining Corps to provide further Examiner instructions relating to subject matter eligibility under 35...more

Patentable Subject Matter in the Life Sciences: New USPTO Guidance Impacts Diagnostic Methods and Natural Products

The United States Patent and Trademark Office issued on May 6, 2016, updated guidance to its patent Examiners that would have an impact on patent applications covering diagnostic methods and natural products. The new...more

USPTO Issues Subject Matter Eligibility Update

On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The...more

Amici Support Certiorari in Sequenom v. Ariosa

In response to Sequenom's March 21 petition for certiorari seeking Supreme Court review of the Federal Circuit's decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. (see "Sequenom Petitions for Certiorari"), a total of...more

Biotech Industry Supports Cert in Sequenom to Avert “Crisis of Patent Law and Medical Innovation”

The biotechnology and life sciences community has voiced broad support for Sequenom’s recent request that the Supreme Court review the Federal Circuit’s decision holding Sequenom’s diagnostic fetal DNA patent ineligible under...more

Myriad vs. Mayo – Detection vs. Processing at the Fed. Cir.

Rapid Litigation Mgmt v. CellzDirect: Splitting Detection of a Natural Phenomenon from its Application to Yield a Product. Courtenay G. Brinkerhoff at pharmapatentsblog.com summarized the oral arguments at the Fed. Cir. (App....more

Sequenom v. Ariosa Diagnostics: A Supreme Court Petition that Requests Clarification on the Patent Eligibility of Diagnostic...

UUnder the Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of nature,...more

Novel Applications of Natural Laws Remain Unpatentable Under 35 USC §101

In Genetic Technologies (GTG), the U.S. Court of Appeals for the Federal Circuit (CAFC) held the line in the patent eligibility saga in the field of biotechnology. GTG asserted U.S. Patent No. 5,612,179 against Merial and...more

Guest Post: Coalition for 21st Century Medicine Comments on Expected Ariosa Cert Petition

The collective experience of the Members of the Coalition for 21st Century Medicine in trying to obtain much needed patent protection for their novel, life-saving technologies has led to one inescapable conclusion: It is...more

Sequenom Petitions for Certiorari

Sequenom filed its anticipated petition for certiorari today for Supreme Court review of the Federal Circuit's decision in Ariosa v. Sequenom. The petition advises the Court that it "should take this opportunity to provide...more

Federal Circuit Affirms Ariosa, but Not Without Concerns (Ariosa Diagnostics, Inc. et al. v. Sequenom Inc. et al. (Fed. Cir....

Denying a petition for en banc rehearing, the U.S. Court of Appeals for the Federal Circuit confirmed the panel’s decision that Sequenom’s patent claiming “a method of detecting paternally inherited nucleic acid” is an...more

Subject Matter Eligibility in the Information Age

By Joseph Herndon -- The test for what is patentable subject matter under 35 U.S.C. § 101 in the United States has become quite difficult to understand.  In Alice Corp. v. CLS Bank, the Supreme Court provided a two-step test...more

The Genetics of Gender Discrimination in Date Palm Patenting

You’re driving south out of Indio along the Grapefruit Boulevard towards Thermal and Mecca because their names sound promising.  A parched desert plain extends to your left, leading up to the austere ridgelines of Joshua Tree...more

Genband US LLC v. Metaswitch Networks Corp. (E.D. Tex. 2016)

Genband US LLC sued Metaswitch for infringement of claims of U.S. Patent No. 6,772,210 ("the '210 Patent") and U.S. Patent No 7,047,561 ("the '561 Patent") in the U.S. District Court for the Eastern District of Texas...more

Top Stories of 2015: #11 to #15

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

Top Patent Law Stories In 2015

I will try to keep this post as brief as possible, since I posted at length on all of the stories. There was a lot of IP action in 2015 – much involving the Fed. Cir. and Supreme Court’s resolution of cases in progress in...more

Wegner to Lee: A Four-Step Program to Resolve 101 Questions

On December 23rd, Harold (“Hal”) Wegner sent Director Lee a one-page Vision of Patent-Eligibility “Trees”, Not the “Forrest” (attached). A very brief summary of his proposed 4-step process might read: 1) Is any element of the...more

Patenting “Natural Products” Down-Under Post-Myriad

Although the Australian High Court held that claims to naturally occurring DNA (e.g., BRCA1 nucleic acid) were not patent eligible because they were not a “manner of manufacture,” since the encoded information therein was not...more

Litigation Alert: Federal Circuit’s Ariosa Decision, Good Chance for Rehearing En Banc

In June of this year, the Federal Circuit panel in Ariosa Diagnostics, Inc. v. Sequenom, Inc. invalidated a patent on the grounds of patent-ineligible subject matter. 788 F.3d 1371 (Fed. Cir. 2015). While the case is one of...more

Physiology/Medicine Nobels Awarded for Discoveries of “Natural Products”

In re Roslin Institute, a Fed. Cir. panel consisting of Judges Dyk, Moore and Wallach ruled that methods of isolating cffDNA were not patent eligible. Judge Dyk, writing for the panel endorsed the “markedly different”...more

Sequenom’s En Banc Petition

For any of us practitioners encountering increasing numbers of s. 101 rejection rejections of diagnostic claims based on Mayo and the March 2014 PTO Guidance – and that is pretty much any life sciences patent attorney – this...more

Eisenberg Analyzes the 101 Exception for Patents Claiming Diagnostic

PatentlyO recently posted a nearly final draft of a paper writer by Professor Rebecca Eisenberg that will be published in the Journal of Science and Technology Law (note to author – fix fn 23). (A copy can be found at the end...more

Natural Products Whiplash

What you need to know: Two important developments in the last week have exacerbated confusion around patent protection for natural products and technologies that implicate laws of nature, calling into question the...more

USPTO Issues New Subject Matter Eligibility Examination Interim Guidelines – Nature-Based Product Guidance

On December 16, 2014, the USPTO issued a comprehensive interim Guidance document for examination of subject matter eligibility under 35 U.S.C. § 101. The new Guidance document supplements the June 2014 Preliminary...more

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