MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 10, Issue 1 - Winter 2012

In This Issue:

1 - Deciphering the Patent-Eligibility Message in Prometheus, Myriad and Classen

1 - Accelerated Examination v. Prioritized Examination

11 - Now What? Strategies for Responding to Final Office Actions

Excerpt from "Deciphering the Patent-Eligibility Message..."

It has been a little more than eighteen months after the Supreme Court issued its opinion on the patent-eligibility of (business) method claims in Bilski v. Kappos. In that time, the Federal Circuit has issued opinions in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Classen Immunotherapies, Inc. v. Biogen Idec, and Association for Molecular Pathology v. U.S. Patent and Trademark Office (“Myriad”) relating to diagnostic method claims. These decisions came in the wake of the Supreme Court’s Bilski decision, and two of them (Prometheus and Classen) were decided on remand from the Court for reconsideration in view of Bilski. The Federal Circuit decided the Prometheus case on remand, finding (again) that the claims recited patent-eligible subject matter. The Supreme Court has again granted certiorari for Prometheus; oral arguments were heard late last year and a decision is due by the end of the Court’s current term in June. Of the other two diagnostic method claims cases, the Federal Circuit decided that some but not others of the Classen claims were patent-eligible, and that none of the method claims at issue in Myriad satisfied the Supreme Court test for patent eligibility. Petitions for certiorari have been filed in both the Classen and Myriad cases.