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United States Patent and Trademark Office Diagnostic Method

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Foley & Lardner LLP

USPTO October 2019 Patent Eligibility Guidance Update Includes New Guidance And Examples For Life Sciences

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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

Foley & Lardner LLP

A Patent-Eligible Diagnostic Method Claim

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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

Knobbe Martens

Federal Circuit Review - July 2019

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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

Bradley Arant Boult Cummings LLP

Detecting Disease Is Not a “Tangible and Useful Result” Eligible for Patenting

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

White & Case LLP

Managing economic and social change toward a sustainable future: A new era for US patents

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How has President Trump's "America First" philosophy affected US patent policy? White & Case partners discussed what an evolving US patent policy will mean for other nations, and to propose effective responses....more

Knobbe Martens

Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC: Claims Reciting Conventional Method Steps found Patent Ineligible

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On February 6, 2019, the Federal Circuit decided Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, affirming a District Court for the District of Massachusetts decision that the claims at issue were patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - October 2018: How To Do The Two-Step In The United States: The Current State of...

In the wake of the Supreme Court’s Mayo and Alice decisions, uncertainty has surrounded what inventions are patent eligible in the United States. In Mayo and Alice, the Supreme Court developed a two-step test to determine...more

Sunstein LLP

July 2018 IP Update: New Guidance for Patenting Method-of-Treatment Inventions

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The U.S. Patent and Trademark Office (USPTO) issued a memorandum on June 7 (the “Memorandum”), providing much-needed guidance to patent examiners as to whether method of treatment claims are to be considered patent-eligible...more

Foley & Lardner LLP

Canada Provides More Guidance On Patent Eligibility Of Diagnostic Method Claims

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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...more

Foley & Lardner LLP

PTAB Puts Method Of Treatment Patents Under The 101 Knife

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While the Supreme Court decisions in Myriad and Mayo have been applied to diagnostic-type claims, method of treatment patents were thought to be safe from the recent judicial expansion of the patent-(in)eligibility doctrine....more

Fenwick & West LLP

USPTO's Patent Subject Matter Eligibility Roundtable on Dec. 5, 2015

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On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility. The USPTO published a list of eighteen questions in anticipation of the event, dealing...more

Foley & Lardner LLP

Supreme Court Deals Blow To Diagnostic Method Patents, Denies Cert In Sequenom

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“If you can’t say something nice, don’t say anything at all” can be good words to live by, but in the context of the Supreme Court’s denial of certiorari in Sequenom, the silence is deafening–and could have a chilling impact...more

Foley & Lardner LLP

Supreme Court Declines to Review Sequenom Ruling

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The U.S. Supreme Court has denied certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc. (No. 15-1182), declining to review the Federal Circuit’s June 12, 2015, decision that certain methods of detecting paternally...more

Foley & Lardner LLP

Will the Supreme Court Clarify Patent-Eligibility?

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The United States Supreme Court is set to render its decision on the grant or denial of Sequenom, Inc.’s (“Sequenom’s”) petition for writ of certiorari that posed the issue: ..Whether a novel method is patent-eligible...more

McDonnell Boehnen Hulbert & Berghoff LLP

Subject Matter Eligibility Guidance -- Example on Screening for Gene Alterations

Last month, the U.S. Patent and Trademark Office issued further guidance for determining subject matter eligibility under 35 U.S.C. § 101. In addition to a memorandum on subject matter eligibility determinations that was...more

Sheppard Mullin Richter & Hampton LLP

News of Note in IP

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team. Here are some of the stories...more

K&L Gates LLP

U.S. Patent Office Issues New Examples of Patent Eligibility Analysis of Life Sciences Claims

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On May 4, 2016, the United States Patent Office published a subject matter eligibility update for determining patent eligibility under 35 U.S.C. § 101. The Update supplements the previous guidelines and includes additional...more

King & Spalding

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

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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

Foley & Lardner LLP

New USPTO Guidance On Patent Eligibility Of Diagnostic Methods

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The patent eligibility examples published by the USPTO on May 5, 2016 include two new examples relating to diagnostic methods and two new examples relating to “nature-based” products. This article will consider the diagnostic...more

Foley & Lardner LLP

USPTO Releases Patent Eligibility Update

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On May 4, 2016, the USPTO released a “May 2016 Subject Matter Eligibility Update” (“Update”) providing guidance to patent examiners on formulating a subject matter eligibility rejection and evaluating an applicant’s response...more

Foley & Lardner LLP

USPTO Issues New Patent Eligibility Examples

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The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

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

Wilson Sonsini Goodrich & Rosati

Important Development in Patent Subject Matter Eligibility for Diagnostic Method Claims: Federal Circuit Denies Sequenom Petition...

On December 2, 2015, the U.S. Court of Appeals for the Federal Circuit issued an order denying a petition for rehearing en banc in the closely watched Sequenom case. Earlier this year, on appeal from the U.S. District Court...more

Foley & Lardner LLP

Patent Subject Matter Eligibility – Impact on Litigation and Prosecution

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Personalized medicine relies on diagnostic technologies to accurately evaluate a patient’s clinical or genetic signature to guide treatment decisions. Protecting innovation by patenting the diagnostic methods and tools that...more

Foley & Lardner LLP

Waiting on Sequenom

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As I write this there’s a voice in my head saying, “Be careful what you wish for!” but it has been five months since Sequenom was argued at the Federal Circuit, and the court has yet to issue its decision. In the meantime,...more

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