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When I was your age, and Pluto was a planet, “obvious to try” was not the standard for evaluating patentability under 35 USC § 103. In KSR v. Teleflex, the US Supreme Court qualified this by rejecting the Federal Circuit’s “TSM” test in favor of a more flexible standard. Thereafter, a skilled person might respond to a “design need” or “market pressure” to solve a problem having only a “finite number of predictable solutions.” Such an application of “common sense” would be unpatentable and “obvious to try.” Perhaps your patience has also worn thin in considering the possibilities?

Recent Federal Circuit decisions continue to shape the law of obviousness and the meaning of “obvious to try.” Here are three examples:

It has now been a week since the US Patent and Trademark Office held its public forum on the March 4th Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (the Guidance). I was invited to present at this Forum, where I provided comments before the USPTO on the necessity for the Guidance, how the Guidance can be improved, and also provided cautions to prevent its misapplication. I had previously written about the Guidance in an earlier article on this site (see, How to Patent Grapefruit Juice: the New USPTO Guidance for Patent Eligible Subject Matter is Both Sticky and Sour).

Remember Dolly the sheep? She was the first mammal to be cloned from an adult somatic cell (a cell other than a sperm or egg cell) – that was in 1996. Well, Dolly is back again in the news, even though she passed away prematurely in 2003.

Last Thursday (May 8, 2014) the Court of Appeals for the Federal Circuit affirmed a ruling by the US Patent and Trademark Office’s Appeal Board that cloned animals are ineligible for patent protection under 35 USC § 101. The Court determined that “Dolly herself is an exact genetic replica of another sheep and does not possess markedly different characteristics from any [farm animals] found in nature.” The Court went on to say, “Dolly’s genetic identify to her donor parent renders her unpatentable.” See In re Roslin Institute (Edinburgh), 2013-1407.

Dr. Anthony Sabatelli, Partner at Dilworth IP, has been invited by the United States Patent and Trademark Office to present his perspectives on the USPTO’s recently issued guidance memorandum for determining subject matter eligibility of claims reciting or involving laws of nature, natural phenomena, and natural products. The presentation will take place during a public forum this Friday, May 9th beginning at 1pm EDT. A webcast of the event will be broadcasted. Interested parties can view it by going to https://new.livestream.com/uspto/myriadforum.

Dr. Anthony Sabatelli, Partner at Dilworth IP will be presenting a free webinar entitled What is Patentable? Insight Into the New USPTO Guidance on Wednesday, May 21st from 1pm – 2pm EDT. Interested parties should note that Dr. Sabatelli has been invited by the USPTO to present his comments in person on this Guidance on May 9th and he will relate his impressions on that forum to webinar participants. Further details about the presentation can be found below.

Back in February I reported that the Supreme Court had a heavy patent docket during this 2013-14 term. See, Busy Schedule for the Supremes – Court Takes on Six High Profile Patent Cases This Term. On Tuesday of this week, the Court issued unanimous decisions in two of these cases: Octane Fitness, LLC v. Icon Health and Fitness, Inc., U.S., No. 12-1184, 4/29/2014 and Highmark Inc. v. Allcare Health Management Sys., U.S., No. 12-1163, 4/29/2014. In deciding these cases, the Court held that the Federal Circuit’s current standard for finding a patent case “exceptional” for the purpose of awarding attorneys’ fees to the prevailing party to be “unduly rigid.”

In my previous post I discussed the recent remand by the 4th Circuit Court of Appeals of DuPont’s $919 million dollar verdict in its trade secret misappropriation case against Kolon Industries. In that decision, the Fourth Circuit Court of Appeals asked the trial court to consider whether the trade secrets in question had lost their proprietary status because they were disclosed in unsealed court documents in a prior litigation. In this post I will briefly summarize the principles that will guide the trial court in resolving this question.

This is the second article in an ongoing review of recent patent trends in the area of Fluid Catalytic Cracking (FCC). In the last installment, we reviewed patents on catalyst additives and demonstrated that relatively few patents had recently issued on FCC additives (e.g., gasoline sulfur reduction catalysts), likely reflecting the current use of gas oil hydrotreaters and naphtha hydrotreaters/desuphurizers, which reduce the need for such additives. The current article covers recent patents relating to zeolites. Review of these patents indicates that the most active area of research regarding zeolites, at least from the standpoint of companies obtaining patent protection, is in the area of zeolite mesoporosity (zeolite pore diameters in the range of 2 to 50 nm).

The U.S. Patent and Trademark Office (USPTO) will host a public forum on May 9, 2014 to solicit feedback from organizations and individuals on its recent guidance memorandum for determining subject matter eligibility of claims reciting or involving laws of nature, natural phenomena, and natural products (Laws of Nature/Natural Products Guidance). The Laws of Nature/Natural Products Guidance implemented a new procedure to address changes in the law relating to subject matter eligibility in view of recent Supreme Court precedent.

Because this Guidance is an topic of importance to the biotechnology and pharmaceutical industry, Dilworth IP plans to submit comments on the Guidance and to participate in the public forum, and encourages others to do so.

Additional information including event registration, comment submission instructions and directions can be found at http://www.uspto.gov/patents/announce/myriad-mayo.jsp and in the Federal Register Notice: https://federalregister.gov/a/2014-08759.

In 2011 DuPont won a near billion-dollar verdict in a trade secret case which is now subject to remand following the defendant’s appeal, providing a lesson for future litigants. DuPont initiated the high-stakes litigation against competitor and a former employee, alleging that the employee shared DuPont trade secrets with Kolon Industries in breach of an obligation of confidentiality the employee owed to DuPont.