USPTO Soliciting Feedback on Recent Guidance Memorandum Concerning Patentable Subject Matter

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.

Hiding Secrets in Plain Sight? Unsealed Court Papers can Jeopardize Trade Secrets

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.

Dilworth IP Advocates for Biotech Industry in Washington

Dr. Anthony Sabatelli of Dilworth IP joined with Paul Pescatello, JD, PhD of CURE (Connecticut United for Research Excellence) to advocate for the Biotech Industry at the BIO 2014 Legislative Day Fly-In. They were part of a larger contingent of over 200 biotech executives and other concerned parties from across the country who converged on Washington, D.C. on April 8th and 9th for two days of advocacy and legislative briefings. While on the Hill, Drs. Sabatelli and Pescatello met with Connecticut’s Congressional Members and senior staff to discuss key issues such as NIH Funding, Medicare Part B and Part D Reimbursement, and patent litigation reform legislation. Dr. Sabatelli, who has been attending this annual event for the past several years, said “the Fly-In is a unique opportunity for those of us advocating for the Biotech Industry to educate our legislators about issues vital to the continued health of this very important industry.”

Dr. Schuchardt Speaking on Obviousness at the 2014 Corporate Patent Seminar

Dr. Jonathan Schuchardt of Dilworth IP will be returning to Chicago on April 10th to speak at the 49th annual (and final) Corporate Patent Seminar. Jon will be speaking on the fast evolving and increasingly confusing topic of Obviousness in light of the AIA, the Supreme Court’s KSR decision, the USPTO’s post-KSR guidelines, and several Federal Circuit decisions. This is Jon’s second presentation at CPS in as many years.

Dilworth IP to Advocate for the Biotech Industry at the 2014 BIO Fly-In

Dr. Anthony Sabatelli of Dilworth IP has been invited to join executives and other concerned parties from the Biotech Industry at the BIO Legislative Day Fly-In on April 8th and 9th for two days of advocacy and legislative briefings. A description of the event form the BIO website:

[A] great day of engaging with Members of Congress and their senior staff on the most important legislative issues facing the biotechnology industry. BIO will schedule all congressional meetings and provide attendees with a robust legislative briefing prior to their visits on Capitol Hill. Attendees meet in small groups with the congressional Members and senior staff of the attendee’s congressional delegation.

For more information about the event, please go to the event website.

How to Patent Grapefruit Juice: the New USPTO Guidance for Patent Eligible Subject Matter is Both Sticky and Sour

On March 4th the US Patent and Trademark Office issued guidelines to its examining corps for assessing patent eligible subject matter under 35 USC §101. The guidelines were issued in light of the Supreme Court’s decisions in Myriad, Prometheus, and related cases. See, “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products.” The Guidance is intended to help examiners determine whether the subject matter of a patent claim is significantly different from what exists in nature.

Basic Patent Law VIII: Frozen Bananas – Requirement of An Enabling Disclosure

Eugene Hoffmann and David Lund had a cool idea, I mean wicked cool: they filed a patent application claiming a process for weakening a tropical storm by using a team of airplanes to inject liquid nitrogen, which boils at -196oC, into the storm’s eye wall. “Holy frozen bananas, Batman, imagine the royalties when this patent issues!” “Not so fast, Boy Wonder—we have an enablement problem!”

Sequenom Update – Diagnostics Developer Files Appeal With The Federal Circuit

The story continues to unfold regarding the patentability of diagnostics. At issue in Sequenom is US Patent No. 6,268,540. This patent is exclusively licensed to Sequenom and claims non-invasive prenatal diagnosis methods using maternal blood samples. The method provides an alternative to techniques such as amniocentesis, which can pose a risk to both the mother and child. Last year, in reviewing the ‘540 patent, the District Court for the Northern District of California issued an Order holding that medical diagnostic method claims are not eligible for patent protection.

Busy Schedule for the Supremes – Court Takes on Six High Profile Patent Cases This Term

The Supreme Court will hear six patent cases during the current 2013-14 term that began on October 7th of last year. This is an extraordinary number of patent cases, considering that the Court is scheduled to hear just 70 cases during this term, and that these 70 cases were selected from over 10,000 petitions for hearings (called writs of certiorari). In contrast, just three patent cases were heard during each of the 2010-11 and 2011-12 terms, and only two patent cases during the 2012-13 term.