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On October 18, the CAFC Circuit Court delivered a verdict in Smart Sys. Innov. v Chicago Trans. Auth. that adds an interesting new wrinkle for determining the question of patent subject matter eligibility.  In a split decision, the court ruled that several contested patents held by SSI were directed to an abstract idea following the Mayo/Alice test for determining patent eligibility, and were therefore invalid.  The dissenting opinion, penned by Judge Linn, offered an interesting, and in our opinion, reasonable, new interpretation for the Mayo/Alice test for determining patent eligibility.

We are fast approaching the Supreme Court oral arguments in the case of Oil States Energy Services LLC v. Greene’s Energy group on Monday, November 27th. We had previously reported on this case in a recent piece, Oil Battles Greene Energy to War over Inter Partes Review in the Supreme Court.  A whopping 57 amicus curiae briefs have been filed, underscoring the intense interest in the outcome of this case.  The briefs represent a vast array of interested parties, including law professors, legal associations, small businesses, and recognized companies in the fields of medicine, electronics, automobiles, and technology. The key issue of the case is simple – whether the Patent Office’s inter partes review (IPR) process is an unconstitutional denial of the right to a jury trial.

William Reid, Partner at Dilworth IP, will be presenting a free webinar on Wednesday, December 13th at 1:00 PM EDT entitled, “Should You Keep It Secret? The Pros and Cons of Trade Secrets and Patent Protection.” You know that protecting your intellectual property is important. A strong IP portfolio is essential to insure economic advantages over your competitors – but what type of protection should you pursue? Patents are well recognized, but in many instances, protection can be limited…or even unavailable. Other times, you may not want to publicly disclose your invention in a patent application. Trade Secret protection – while potentially much more applicable to your business needs than patents – is also more fragile; and has completely different rules of the road in terms of stewardship.

The Berkeley Center for Law & Technology (BCLT) held a round table discussion workshop with opinion leaders from science, technology, and the law to discuss patent subject matter eligibility.  A Report on the workshop, which is quite extensive and contains a number of tables and charts, should be of interest to a wide audience.  This Report comes on the heels of Senator Orrin Hatch’s op-ed article that also called for reform of subject matter eligibility (reviewed by Dilworth IP here).  A number of recommendations, some of which are detailed below, were proposed by workshop participants to clarify subject matter eligibility as related to 35 U.S.C. § 101.  Of note, this workshop was further detailed in a blog piece on PatentlyO.

Sequencing whole human genomes presents many technical challenges. Whole human genomes have a large number of long repetitive sequence segments of more than 1,000 bp, which cannot be distinguished by short-read instruments. Since it has been reported that each individual human genome has 2.7 to 4.1 million variants, then, for the 3.2 Gigabyte whole human genome, there is at least one variant per every 1,000 bases. These long repetitive sequence segments could include structure alteration and gene mutations relating to diseases, but might not be efficiently and accurately characterized by short-read NGS technologies.  To address these challenges, long-read sequencing technologies have been developed and have already provided some astounding applications. For example, in 2014, scientists successfully applied nanopore sequencing technology developed by Oxford Nanopore Technologies (ONT) to monitor the transmission history and disease evolution of the Ebola virus, essentially in real time, during its outbreak. In this installment, we will discuss two of the main long-read sequencing technologies: (i) the synthetic approach and (ii) the single-molecule sequencing approach, and will review the relevant patents.

We may not realize it, but the human body is home to an astonishingly large number of microorganisms that live both in us and on us. This resident microbial population, which is estimated to number over 100 trillion microorganisms, is collectively known as the ‘microbiome’ or, more specifically, the ‘human microbiome’ [1].The microbiome can also refer to microbial communities in or on other living organisms such as our pets, livestock and food crops, as well as those external to us, for example, those found in the air, soil and sea, or those found in or on inanimate objects ranging from computer keyboards to office buildings

Long heralded as a technology just around the corner, artificial intelligence is finally making an impact in today’s world.  As the technology progresses and becomes more widely adopted, routine mental tasks will become increasingly automated, so much so that nearly 50% of the jobs currently performed by humans are predicted to be automated in the future. In this article, we examine the impact artificial intelligence is having on intellectual property law today, and how this technology will likely affect the field in the future.

Here is a case on the Supreme Court docket that could become a landmark decision for the patent community. Oil States Energy Services LLC v. Greene’s Energy Group is the first time the Court has agreed to review the constitutionality of inter partes review (IPR). Over thirty amicus curiae briefs have been filed in this high-profile case that could greatly impact patent infringement and litigation practices. The Court granted a writ of certiorari[1] to Oil States on June 12, 2017, and has set a date for argument next month on November 27. As we look forward to the decision, we review here the critical details of the case.

Dr. Anthony Sabatelli and Dr. Jing Zhou of Dilworth IP presented a talk entitled “Pharmaceuticals: At the Intersection of Patent and Regulatory Law” at the SAPA-CT 4th Annual Conference on Saturday, October 7th. The Sino-American Pharmaceutical Professionals Association (SAPA) was founded in 1993 as an independent and nonprofit organization seeking to bridge the U.S. and Chinese pharmaceutical worlds by providing training in drug research and development, creating a broad network, and hosting delegations from China. The theme of this year’s conference was “Adapting to the Changes in Biotech/Pharmaceutical Industry” and was held at the Yale School of Management from 8:00 am to 6:30 PM.

Frederick A. Spaeth, Partner at Dilworth IP, will be hosting a FREE webinar on Wednesday, November 1st at 1:00 PM (EDT). This installment in the Dilworth IP Webinar Series is entitled Strategic Approaches for Drafting NDAs: A Critical Look at ‘Standard’ Clauses and Current Trends – A 2017 Update, and will focus on providing helpful strategies for properly structuring Nondisclosure Agreements (NDAs). NDAs are used everywhere: in business, politics, religious organizations, government, etc. Templates are easy to find, but experienced users will attest that there is no universal ‘standard’ NDA. In practice, an NDA should be tailored to the situation at hand and to meet the needs of the parties involved. Otherwise, the parties may be left with an ill-fitting agreement that doesn’t reveal its flaws until a dispute is brewing. This webinar will take listeners beyond a ‘one-size-fits-all’ view for a detailed look at how an NDA can and should be structured. The discussion will touch on choosing clauses to insist on and those to let go, on agreement language that goes without saying but should sometimes be said nonetheless, on non-standard clauses for specific situations, and on recognizing when the terms needed in an NDA may be dictated by external factors. The influences of recent laws, such as DTSA (Defense of Trade Secrets Act of 2016), will be discussed as well.