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Are diagnostic claims now at risk?

On October 30, 2013 the United States District Court for the Northern District of California issued an Order holding that medical diagnostic method claims are not eligible for patent protection. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., Case No. C 11-06391 SI. This District Court Order is significant because it was made upon remand and direction from the Federal Circuit to examine the subject matter eligibility of diagnostic patent claims in light of the Supreme Court’s recent decision in Association for Molecular Pathology v. Myriad Genetics, Inc.,133 S. Ct. 2107 (2013). However, the District Court decision is also potentially concerning because it raises the specter of whether lower courts will now feel compelled to issue rulings on important patent questions that are still evolving at the Supreme Court level. Some might even argue that these patent questions deal with important public policy issues that should more appropriately be addressed by the legislative branch and the US Patent and Trademark Office.

On September 24, 2013, the world’s five largest Intellectual Property Offices, the so called IP5: the USPTO, the Japan Patent Office, the State Intellectual Property Office of the People’s Republic of China, the Korean Intellectual Property Office, and the European Patent Office, agreed to launch an IP5 Patent Prosecution Highway (PPH) pilot program in January 2014. This is just the latest example of the increasing popularity of PPH-type programs already in use in the United States and around the world. In view of the support these programs enjoy, both at the USPTO and foreign Offices, it’s likely they are here to stay. This is a very positive development for companies that file patents, since review of a company’s global filing strategy with an eye toward making use of the patent prosecution highway could yield big benefits.

Dilworth IP is very excited to announce the newest member of our team, Dr. Anthony Sabatelli. Dr. Sabatelli comes to us with a wealth of experience in the Biotech and Pharmaceutical industries with over twenty years of industry experience focused primarily in the biotechnology, pharmaceutical, chemical, material science, and consumer products industries. He holds a Ph.D. in organic chemistry from Yale University and a law degree from Salmon P. Chase College of Law.

Dilworth IP’s Jon Schuchardt will be a presenter at the upcoming Strafford webinar: “Obviousness Standard After the AIA: Leveraging Latest PTO and Court Guidance.” The live 90-minute webinar with interactive Q&A starts at 1:00 p.m. EST on Thursday, November 14th. Convergence of the AIA, the Supreme Court’s KSR v. Teleflex decision, the USPTO’s post-KSR guidelines, and recent Federal Circuit rulings have created a rapidly evolving obviousness standard that is more confusing than ever.

Dilworth IP’s half-day symposium at NERM 2013 is just two weeks away! The Firm has been invited to organize the event for the Northeast Regional Meeting (NERM) of the American Chemical Society at the Omni Hotel in New Haven on October 23rd. We are very excited to be a part of this large gathering of scientists and engineers.

Our speakers, accomplished IP practitioners with diverse experience and backgrounds including industry, academia, and private practice, will be presenting eight short talks on Intellectual Property Fundamentals: What Everyone in R&D Must Know. These talks include such topics as How to Read a Patent, Aligning Your IP Strategy with Your Business Strategy, and Copyright Issues to Consider When Publishing. The symposium will be a great source of practical IP knowledge for business managers, scientists, or anyone involved in research and development.

Dilworth IP will host a half-day symposium on intellectual property law at the Northeast Regional Meeting (NERM) of the American Chemical Society at the Omni Hotel in New Haven, CT on October 23, 2013. Intellectual Property Fundamentals: What Everyone in R&D Must Know will feature short presentations designed to give scientists, engineers, business managers, and other R&D professionals practical knowledge on key aspects of IP law.

Most patents are a would-be private investigator’s dream. Earlier, we learned that having the right approach to reading patents matters. To get the most out of your technical reading, pay attention to the “why.” So how is a patent like a mystery novel? For discriminating readers, patents provide a bonanza of clues, but it takes effort, and knowing where to look, to unearth the golden nuggets from what’s often a mountain of spectacularly obtuse text.

Why is it important to write a good invention disclosure? Ultimately, an invention disclosure will have many audiences, and “garbage in, garbage out” applies. By crystallizing data and results into a simple document, a scientist or engineer can convince management that it will be worth the effort and cost to file a patent application. However, a poorly crafted disclosure will confuse everyone, including the attorney or agent assigned to draft a patent application. The resulting application may be poor also, which will alienate a patent examiner. If you’re fortunate, the application will be allowed anyway. However, your competitors will identify any weaknesses in the granted patent—including the quality of your scientific showings—in the event the patent is subject to post-grant review, inter partes review, reexamination, or litigation.

When Justice Kagan wrote for a unanimous U.S. Supreme Court in Bowman v. Monsanto Company (decided May 13, 2013), she may have had Shakespeare’s Polonius in mind. After all, the opinion is a mere ten pages. However, the opinion is even more remarkable for its simple language and calm rhetoric. Given the lopsided decision, the Court could have hammered the petitioner with extensive case citations, legal jargon, and a nasty tone. Instead, it delivered the bad news to Bowman gently.

Obviousness is one of patent law’s basic requirements. Section 103 of 35 U.S.C. provides that even if an invention is novel (as defined in Section 102), a patent may not be obtained if the “differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date to a person having ordinary skill in the art to which the invention pertains.”