Author: Thomas DeFelice

Dr. Anthony Sabatelli Returns to USPTO to Present Views on Revised Patent Eligibility Guidance

Dr. Anthony Sabatelli, leader of Dilworth IP’s biotech and pharmaceutical patent practice group, has once again been invited by the USPTO to share his thoughts and insights on the Office’s recently issued 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance), a supplement to the patent eligibility Guidance issued earlier in 2014. Dr. Sabatelli’s presentation will take place this Wednesday, January 21st, between 1pm and 5pm EST at the public eligibility forum held at the USPTO’s Madison Building. A live internet feed of the forum will be made available by the USPTO. Further information about the Guidance and the forum can be found at the USPTO’s website found here.

Dr. Jonathan Schuchardt to Present in Upcoming Strafford CLE Webinar on Obviousness

Dr. Jonathan Schuchardt, Partner at Dilworth IP will be presenting as a panelist for the upcoming Strafford webinar Obviousness Standard After the AIA: Leveraging Latest PTO and Court Guidance. This webinar can be used to obtain CLE credits through Strafford. The webinar is scheduled for Thursday, January 15th from 1:00pm to 2:30pm EST.

Dilworth IP Welcomes Dr. Cambria Alpha-Cobb to the Team

Dr. Cambria Alpha-Cobb has joined Dilworth IP’s Biotech and Pharmaceutical Practice Group as a Technology Specialist. Dr. Alpha-Cobb holds a Ph.D. in Molecular Biophysics and Biochemistry from Yale University where her research focused on bacterial resistance to antibiotics in addition to exploring small molecule signaling through the design of cell permeable drugs. Although her primary focus has been on advancements in the biological field, her research has broadly encompassed genetic engineering, protein and antibody design, and mycological studies. Cambria’s undergraduate work at Rice University included a study of the structural evolution of hemoglobin, while also majoring in Spanish language and culture. She speaks Spanish fluently and is also conversant in German.

PTO Issues New Revised Guidance for Patent Eligibility

The United States Patent and Trademark Office published a new, revised Guidance today on patent subject-matter eligibility. This new memorandum is in direct response to criticism received by the PTO from its publication of a previous guidance which had sought to address patent eligibility issues raised by the Myriad and Mayo decisions. The latest revision not only seeks to address the criticisms of the previous Guidance, which dealt primarily with patents in the life sciences, but also includes guidelines on patent eligibility for software and business method patents as set forth in the Supreme Court’s recent Alice Corp. decision. The PTO has also announced that another public forum to discuss this Guidance will be held on January 21, 2015. In concert with that public forum, a 90 day comment period will be open soon after the Guidance is recorded in the Federal Register.

Dr. Joseph Suhadolnik Joins the Dilworth IP Team

Dilworth IP is very pleased to announce that Dr. Joseph Suhadolnik, formerly of Chemtura Corporation, has joined the firm’s Chemical Patent Practice. Dr. Suhadolnik is a patent agent with a very strong background in polymer chemistry, dyes/pigments, industrial coatings, batteries, UV absorbers and several other technologies. Prior to his work at Chemtura, Joe worked as a patent agent at Ciba Specialty Chemicals and at BASF after its acquisition of Ciba. He holds a Ph.D. in organic chemistry from the University of Minnesota and performed his postdoctoral research at Rensselaer Polytechnic Institute in Troy, NY.

Dr. Suhadolnik is a named inventor on over 65 patents, some of which have set new standards in their respective industries. Having spent most of his career as both a research scientist and as a patent agent, Joe’s strong technical credentials and his in-house experience further strengthens the firm’s already very strong chemical practice and our depth of in-house experience. Dr. Suhadolnik will be working from Dilworth IP’s Connecticut offices.

We are very excited to welcome Joe to the firm and look forward to working with him!

To contact Joe directly, please email him at

Upcoming Webinar: Worth the Candle and a South African Yellow Canary: Will the Supreme Court Snuff de novo Review of Claim Construction in Teva Pharmaceuticals v. Sandoz?

On October 15, 2014, the U.S. Supreme Court heard oral arguments in Teva Pharmaceuticals v. Sandoz, a case that concerns the amount of deference the Federal Circuit must afford a district court’s construction of patent claims.

Teva, owner of patents on the multiple sclerosis drug Copaxone®, contends that claim construction is intertwined with fact finding, that Federal Rule of Civil Procedure 52(a) should apply to claim construction, and that a district court’s claim construction should only be set aside for clear error. In short, the Federal Circuit’s long-standing practice of de novo review of claim construction—which was validated by the Supreme Court’s 1996 decision in Markman v. Westview Instruments and confirmed by the Federal Circuit (6-4) en banc in February 2014 in Lighting Ballast Control v. Philips Electronics—should be overruled.

Sandoz and other generic drug makers counter that Markman remains good law, that Rule 52(a) applies to fact finding outside the context of claim construction, that claim construction is a purely legal matter best left in the hands of a judge rather than a jury, that the current law promotes uniformity and predictability, and that the Federal Circuit correctly reviews claim construction de novo.

Which side will prevail? Who won the oral argument? Which justices will reverse their position almost two decades post-Markman?

We’ll review important background decisions, analyze the briefs, dissect the justices’ questions, and speculate about how the Supreme Court will rule. Join us—it should be “worth the candle”!

CT Innovations and Dilworth IP Launch a New Resource for Entrepreneurs

Connecticut Innovations (CI), the leading source of financing for Connecticut’s innovative, growing companies, has partnered with Dilworth IP on a new four part series entitled “Patents: Beyond the Basics”. The series consists of several answers to FAQs from CI’s venture companies and entrepreneurs on intellectual property strategy and is authored by six Dilworth IP attorneys, Michael Dilworth, Dr. Anthony Sabatelli, Dr. Jonathan Schuchardt, Gerard Wissing, William Reid, and Fred Spaeth. The Firm is very excited to have been selected for this distinction. Part I of this series is now available on CI’s website. Subsequent editions to the series will be launched over the next several weeks. Please stay tuned for further updates.

Dilworth IP Announces Partnership with the Yale Entrepreneurial Institute

Dilworth IP is very excited to announce our newly formed partnership with the Yale Entrepreneurial Institute (YEI). YEI’s mission is to foster innovation at Yale by providing resources and education in the form of incubator space, seed funding, and mentoring, as well as educational programs on the legal and business considerations of entrepreneurship. This mission meshes well with Dilworth IP’s commitment to education and innovation. Seeing the great value in encouraging and mentoring students in their pursuit of entrepreneurial success, the firm has partnered with YEI to provide legal resources to its start-ups in the form of educational training, resource materials, and counseling.

Upcoming Webinar: Filing in the Fast Lane – Leveraging the Patent Prosecution Highway to Get You from “A” to “B” Quicker (and Cheaper!)

While there are certainly rules of the road that must be followed, generally speaking, the current version of the Patent Prosecution Highway (PPH) can be a cost-effective and user-friendly means for in-house counsel and small business owners to get their patents granted in multiple international jurisdictions. It hasn’t always been so in the past, and there are a few key requirements that must be met, so knowing when the highway is an option and when it’s not the best route is critical. This webinar will focus on the improvements made to the PPH through the more recent IP5 and GBBH agreements, providing a streamlined, filing framework which could potentially save patent owners tens-of-thousands of dollars in international prosecution costs per application. With several examples and some recent statistics, this introduction to the PPH will be time well spent for in-house patent counsel concerned about departmental budgets, small business owners hoping to protect their patents internationally, and outside counsel seeking ways to better advise their clients. William Reid, Partner at Dilworth IP will be presenting a free webinar entitled Filing in the Fast Lane – Leveraging the Patent Prosecution Highway to Get You from “A” to “B” Quicker (and Cheaper!) on Wednesday, September 24th from 1pm – 2pm EDT. Read more to register…

USPTO Publishes Comments on Guidance for Patent Eligible Subject Matter

Back on March 4 the U.S. Patent and Trademark Office issued what has turned out to be a very controversial Guidance on patent eligible subject matter. This Guidance was issued in response to several high-profile Supreme Court decisions involving questions of patent eligibility under 35 U.S.C. § 101. The USPTO has since held a public forum and meeting on the Guidance, at which Dilworth IP’s own Dr. Anthony Sabatelli was invited to present, and also invited public comment. These comments, including those submitted by Dilworth IP, have now been published on a USPTO web page devoted to the Guidance.