September 18, 2018
While the recent holding in Univ. of California v. Broad Institute, Inc.1, will certainly have long-reaching and important implications in the fight for control over CRISPR-based technology, the Federal Circuit’s opinion also provides additional confirmation that an obviousness determination must demonstrate a “reasonable expectation of success” when combining references from the prior art. The case arises… Read more »
August 21, 2018
A catalog distributed at a members-only trade show was found to be a printed publication under 35 USC § 102(b).1 The Federal Circuit vacated and remanded a Board decision finding that an IPR challenger’s catalog distributed at a trade show was not sufficiently available to the general public to qualify as a printed publication. The Federal… Read more »
July 18, 2018
For many patent practitioners, drafting a patent application based on an invention disclosure is one of the skills learned during the formative years of practice. It often involves repeated discussions with inventors regarding the scope, focus and overall concept of the invention to be described. What may not be a focus, however, is a full… Read more »
July 03, 2018
One June 7, 2018, the USPTO issued a Memorandum1 to the Examining Corps emphasizing that method of treatment claims can satisfy 35 U.S.C. §101 under the first step of the two-part Alice/Mayo analysis without requiring a showing of nonroutine or unconventional steps. The Memorandum was prepared in light of the April 13, 2018 decision by the Federal Circuit… Read more »
June 04, 2018
Patent applications containing nucleic acid and/or protein sequences are required to include a sequence listing, typically submitted electronically as an ASCII text file. Applicants are advised to include an electronic sequence listing at the time of filing and ensure that the sequence listing is a part of the international application. However, submission at the time… Read more »
May 21, 2018
On April 19, 2018, the United States Patent and Trademark Office (USPTO) issued a Memorandum to the Patent Examining Corps with guidance for determining whether a claim element is “well-understood, routine or conventional” when making a determination of subject matter eligibility under 35 U.S.C. §101. A two-part test for determining subject matter eligibility was set… Read more »
May 08, 2018
Contrary to the name, a “final” Office Action is not the end of the road for patent prosecution. Several options are available to applicants after receiving a final Office Action, including USPTO initiatives designed to expedite patent prosecution. Importantly, actions taken for any of the options listed below must be within the six-month statutory period… Read more »
April 16, 2018
In light of the decision by the Federal Circuit in Amgen v. Sanofi,1 the USPTO issued a two-page Memorandum2 to the Patent Examining Corps “to clarify the applicability of USPTO guidance regarding the written description requirement of 35 U.S.C. §112(a)” as it applies to antibodies. The Memorandum refers to the decision in Amgen, in which “[t]he Federal Circuit… Read more »
March 26, 2018
Several products approved for marketing as drugs in the US are administered using a device (a drug-device combination product). Companies that own such products often file at least one U.S. patent to protect the device. In addition to obtaining patent protection for the device, a company may also wish to list the device patent in… Read more »
March 12, 2018
The Texas Supreme Court ruled in In re Andrew Silver1 that client-patent agent communications are protected by attorney-client privilege, stating that patent agents fall within the definition of “lawyer” according to Texas law because patent agents are authorized to practice law before the USPTO. The case involved a patent purchase dispute between Andrew Silver, an inventor, and… Read more »
