Podcast: Owner's Outlook: National Trends in Construction Claims - Diagnosing Health Care
The latest version of the CNIPA’s Guidelines for Patent Examination (hereinafter referred to as “the latest Guidelines”) came into force as of January 20, 2024. In comparison with the previous version of the Guidelines, there...more
The Supreme Court seemed, at least to a small degree, interested in evaluating the subject matter eligibility of diagnostic claims when it requested that the respondents (Natera Inc. and Eurofins Viracor Inc.) respond to a...more
Decision highlights the need for applicants to focus on additional improvements to technology when drafting and prosecuting applications directed to computer-implemented diagnostics methods. On March 25, 2021, the Federal...more
The Canadian Intellectual Property Office (CIPO) released new guidelines on patentable subject matter and a set of examples applying the new guidelines to computer-implemented inventions, medical diagnostic methods, and...more
This program will cover important patent and trademark trends and cases in 2020, including: - The Trademark Modernization (TM) Act of 2020 - Counterfeiting: Tiffany v. Costco - Transformation from Generic to Protectable:...more
In a significant decision released August 21, 2020, Choueifaty v Canada (Attorney General), 2020 FC 837 [Choueifaty], Canada's Federal Court rejected the Canadian Intellectual Property Office’s (CIPO) approach to examining...more
Federal Circuit Hands Down Modified Opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc. Earlier this year, the Federal Circuit (somewhat surprisingly) found claims of two Sequenom patents directed to methods for...more
Is a new method of diagnosing a disease patentable? Can it survive a motion to dismiss? And, irrespective of the current precedent, should a new method of diagnosing a disease be patentable? These are questions the U.S. Court...more
Since the Supreme Court’s decisions in Mayo Collaborative Services, LLC v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. v. CLS Bank, 573 U.S. 208 (2014), lower courts and the United States Patent and...more
The Federal Circuit held that two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under Section 101, reversing a decision from the District Court for the Northern District of...more
Ever since the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories was handed down in 2012, diagnostic method claims have been routinely invalidated by the district courts and those decisions...more
The cloud of uncertainty over patent eligibility of patents for medical diagnostic methods remains. On Monday, the Supreme Court declined the opportunity to revisit patent eligibility under its two-step Mayo test when it...more
On January 13, 2020, the U.S. Supreme Court denied certiorari in the following cases...more
On Jan. 10, the Supreme Court will decide whether it will review the Federal Circuit's decisions in the Athena v. Mayo, HP Inc. v. Berkheimer and Hikma v. Vanda cases. The Solicitor General, at the invitation of the Supreme...more
This article discusses challenges in prosecuting bioinformatics patent applications before the China National Intellectual Property Administration (CNIPA). The CNIPA determines the subject-matter eligibility of bioinformatics...more
This article discusses challenges in prosecuting bioinformatics patent applications before the European Patent Office (EPO). The EPO determines the subject-matter eligibility of bioinformatics patent applications under...more
The USPTO has released additional patent eligibility guidance to supplement the guidance released in January. While much of the October 2019 Patent Eligibility Guidance Update relates to claims falling under the “abstract...more
On Friday I will be speaking at the AUTM Eastern Regional Meeting, on a panel discussing patent eligibility issues for life sciences inventions. My topic relates to what the USPTO refers to as “nature-based products,” but...more
In a remarkable collection of opinions that have no direct effect on the law, the Federal Circuit has implicitly given its support to efforts in Congress to override the Supreme Court’s decision in Mayo v. Prometheus, which...more
As discussed in a previous blog post, since Mayo v. Prometheus, critics of medical treatment patents have advocated that such patents should be banned from patenting. While such arguments seemed futile based on the consistent...more
In an opinion evidencing the split in opinion regarding the patent eligibility of diagnostic methods, the US Court of Appeals for the Federal Circuit denied a petition for panel rehearing or rehearing en banc, leaving in...more
Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more
On August 9, 2019, the Federal Circuit issued a public opinion in Genetic Veterinary Sciences, Inc. v. LABOKLIN GmbH & Co. KG, finding claims directed to methods for detecting a genetic marker for a canine hereditary disease...more
The federal appeals court with jurisdiction over questions of patent law has consistently held that methods of diagnosing a disease or other biological condition violate the Supreme Court’s ban on patenting “natural...more
In Genetic Veterinary Sciences, Inc. v. Laboklin GMBH & Co., the Federal Circuit upheld the district court decision that held claims directed to methods for genotyping a Labrador Retriever invalid under 35 USC § 101 at the...more