Comparing Apples to Pears Earlier this year, Apple, the holders of one of the strongest and most recognizable trademarks in the world, filed an opposition on the last day possible to a trademark application filed by Super Healthy Kids. Super Healthy Kids is a small business, currently only having around five employees, and created an iOS and Android application […] Read Post →
USPTO Publishes Revised Ninth Edition of the MPEP In June, the United States Patent and Trademark Office (USPTO) published the newest revisions to the Ninth Edition of the Manuel of Patent Examination Procedure (MPEP). The revisions update the MPEP to include all the changes that became effective as of October 2019. This revision updates every section of the MPEP, except for Chapters 1100 […] Read Post →
Strong Patents Encourge Research into Emergent Diseases Scientists have been asked many questions over the past few months, such as why the current pandemic was not prevented or what would be needed to prevent future outbreaks of emergent diseases. The short answer is vastly more research needs to be done. Emergent diseases are, by definition, diseases which have not appeared before within […] Read Post →
Supreme Court Declines to Further Deal with 101 On January 13, the Supreme Court denied certiorari in five additional patent cases involving 101, including Athena, Vanda, and Berkheimer. Many sides, including industry, academics, and the government, were encouraging the Supreme Court to uptake at least one case in order to help clarify or define the Alice/Mayo framework. However, even given the pressure, the Supreme Court still denied every case. Further, […] Read Post →
Update from the AIPLA Biotech Committee Meeting At the recent American Intellectual Property Law Association (AIPLA) conference the AIPLA Biotechnology Committee met to discuss two biotechnology issues: 35 USC 101 legislation and treatment of genetic resources (GR) and traditional knowledge (TK). Bob Stoll, former Commissioner for Patents at the USPTO and member of AIPLA’s 101 taskforce led the 101 discussion as part […] Read Post →
Update from the AIPLA Biotech Committee At the recent American Intellectual Property Law Association (AIPLA) conference, the AIPLA Biotechnology Committee met to discuss two biotechnology issues: 35 USC 101 legislation, and treatment of genetic resources (GR) and traditional knowledge (TK). Bob Stoll, former Commissioner for Patents at the USPTO and member of AIPLA’s 101 taskforce, led the 101 discussion as part […] Read Post →
US Courts Tripping over TRIPS This summer, the Australian Federal Court went the other way in Sequenom, Inc. v. Ariosa Diagnostics, Inc. than the US, finding that the method of detecting fetal DNA in maternal blood to be eligible subject matter and that the patent was valid and infringed. While the Federal Circuit described the invention as “truly meritorious” and […] Read Post →
40 Years on, Bayh-Dole is Stronger than Ever The Bayh-Dole Act was passed in 1980 and is arguably one of the most successful pieces of bipartisan legislation ever passed. The first line of the Act says, “It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development….” […] Read Post →
Is Congress Finally Doing their Constitutional Duty? On June 4, 5, and 11, 2019 the Senate Intellectual Property Sub-Committee held hearings regarding the new proposed changes to patent statutes, including to Sections 100, 101, and 112. The Sub-Committee will be hearing from a total of 45 witness on both sides of the debate. Most of the attention during the June 4th and […] Read Post →
Judicial and Executive Branches split over Subject Matter, New Legislation may be Coming Earlier this month the U.S. Court of Appeals for the Federal Circuit (CAFC) heard another appeal in the Cleveland Clinic v. True Health cases. In their appeal, one of Cleveland Clinic’s arguments that their claims were valid was because Skidmore deference should apply to the Examiner’s decision to allow the application to issue in light […] Read Post →
Athena Diagnostics v. Mayo Collaborative Services Part 2, or: For the Benefit of Us All Part 1 of the review of Athena Diagnostics v. Mayo Collaborative reviewed how the Majority Opinion is at odds with precedent and the most recent United States Patent & Trademark Office (USPTO) Subject Matter Guidelines published last month. Part II below examines the dissent from Judge Newman and how it aligns with both precedent and […] Read Post →
Athena Diagnostics v. Mayo Collaborative Services Part 1, or: How I Learned to Stop Worrying and Love the Inconsistencies Part 1 of the review of Athena Diagnostics v. Mayo Collaborative will look at how the Majority Opinion is at odds with precedent and the most recent United States Patent & Trademark Office (USPTO) Subject Matter Guidelines published last month. Part 2 will look at the dissent from Judge Newman and how it fits better […] Read Post →
USPTO Updates 112 Guidance: Presumption Shift of Functional Limitations Recently, the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on functional claim language under 112 and will after a period of public input. This update will likely require a more detailed specification for functional claims or result in narrower claims. Under the proposed 112 guidelines, which are aimed […] Read Post →
USPTO Updates 101 Guidance: Making Abstract More Concrete Recently the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on 101 issues and will do so after a period of public input in order to increase clarity during prosecution. This update will replace, not just update, several sections of MPEP 2106. The update will also provide practitioners a […] Read Post →
Has Alice Killed all the Fun? Games, both the physical board and the methods of playing them, have had a long history of patent eligibility. For example, in 1904 Elizabeth Phillips patented the game board for Landlord’s Game, which was then later controversially patented by Charles Darrow in 1934 as Monopoly. While both of these patents were to the physical boards […] Read Post →
The Rollercoaster Ride of Gene Therapy Gene therapy has had several ups and downs since the idea of editing genes for therapy was first published in 1972. While there have been several instances of successful attempts of treatment in humans, there have also been cases failures which have, at times, temporarily halted clinical studies. One of the main issues with gene […] Read Post →
PTAB Makes Broadest Interpretation on Estoppel in IPRs Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further increased the pressure to use the limited number of words effectively when Kingston Technology Company, Inc. v. Spex Technologies, Inc. (Case IPR2018-01002) was entered. Kingston, the petitioner, attempted to file […] Read Post →
CRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious! On Monday, September 10th, the Court of Appeals for the Federal Circuit (CAFC) upheld the decision from the Patent Trial and Appeal Board (PTAB) on the interference between the Broad Institute and the University of California. The PTAB held, and the CAFC upheld, that given the difference between prokaryotic and eukaryotic cells, one skilled in […] Read Post →
AUTM’s Recommends Narrow Changes to NIST on the ROI Initiative The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative. The Association of Technology Managers (AUTM), who supports the ROI Initiative, stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly […] Read Post →
USPTO Director Andrei Lancu Takes a Look at Early Prosecution This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner […] Read Post →
Patentability and Patent Protection: Is the Pendulum Starting to Swing Back? The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property. However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the country. According the to Index, the US has dropped to […] Read Post →