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Supreme Court Tackles §101 in Mayo v. Prometheus

Posted: Thursday, Dec 8, 2011 @ 1:09 pm | Written by Ryan Chirnomas | 3 comments

Yesterday in Mayo Collaborative Services v. Prometheus Laboratories the Supreme Court addressed the question of patent eligible subject matter under 35 U.S.C. §101 for the first time since the Bilski decision last year.

Briefly, one of the claims in issue recites a method of optimizing treatment for an immune-mediated gastrointestinal disorder where a specific drug is administered to a patient, the level of a specific metabolite is determined in the patient’s blood, and a particular high metabolite level of a particular value indicates a need to reduce the dosage and a particular low metabolite level at a particular value indicates a need to increase the dosage. Another claim recites the same method, except excluding the administering step. Administering the drug was known in the art. Detection of the metabolites was known in the art. However, the correlation between specific metabolite levels and effectiveness or toxicity of the drug was not known.

Supreme Court Hears Oral Argument in Mayo v. Prometheus

Posted: Wednesday, Dec 7, 2011 @ 11:29 pm | Written by Gene Quinn | 20 comments

Earlier today, at 10:05 am precisely, the United States Supreme Court heard oral arguments in the case styled Mayo Collaborative Services v. Prometheus Laboratories.  A press release issued by the AIPLA sums the cautious optimism of many: the Supreme Court “appeared to move closer to the Federal Circuit’s understanding of patent eligible subject matter.”  Of course, no one will really know for some time, and there is certainly enough reason to worry after the oral argument.  Predictably Justice Breyer seems ready to rule virtually all process claims unpatentable, and surprisingly Chief Justice Roberts seemed more in agreement with Breyer than anyone else.

In all likelihood it will be at least a couple months before we know the outcome of this case, which holds in the balance the future of medical treatment claims.  In fact, the average length of time for the Supreme Court to decide patent cases since Markman in 1996 is about 3 months.  The most recent Supreme Court cases have lingered on average over 5 months.  How the Supreme Court operates is one of the better mysteries in our form of government, and there will be absolutely no signaling of when to expect a decision.  The Supreme Court will just one day announce a decision.  Notwithstanding, I’m going to hazard a guess that we will have a decision between the end of March 2012 and the end of May 2012.  I don’t see this as an end of the term opinion.

PTO Updates Patent Bar Exam to Test AIA & Appeal Rules

Posted: Tuesday, Dec 6, 2011 @ 4:05 pm | Written by Gene Quinn | 1 Comment »

On November 23, 2011, the Office of Enrollment and Discipline announced that the Patent Bar Examination, typically referred to simply as “the registration examination” by the Patent Office, will be updated on or about January 31, 2012.

The United States Patent and Trademark Office will update the content of the patent registration examination to cover two new rules issued September 26, 2011 that relate to the Leahy-Smith America Invents Act.  These new rules permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests.  Additionally, the patent registration examination will also include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.

What Will Prior User Rights Mean for Patent Litigators?

Posted: Monday, Dec 5, 2011 @ 6:24 pm | Written by Gene Quinn | 33 comments

On September 16, 2011, U.S. patent laws embarked upon the most significant overhaul of the patent laws ever; the America Invents Act was signed into law by President Barack Obama. The new patent law will be phased in over time, some coming on line immediately, still more coming on line shortly after enactment, more yet coming online on September 16, 2012, and the largest piece being phased in on March 16, 2013. Meanwhile, the United States Patent and Trademark Office will begin to implement rules associated with the AIA, but are already well underway with new substantive rules rules relating areas not impacted by the AIA, such as Appeals and Reexaminations, for example.

By the time we get to March 16, 2013 the day to day patent practice, the rules and litigation of patents will be quite different than what we have today. Thankfully we have at least a little while to figure things out, but not as long as you might expect, but save that topic for another day. One of the things that has been much talked about in many corners since the enactment of the AIA is the inclusion of prior user rights, which was done at the last minute without much of any debate or discussion.  While there are numerous pitfalls for the unwary hidden within the AIA, one particularly thorny issue is the issue of prior user rights.

CAFC Rules “Secret Prior Art” Requires Only Appreciation that Invention Made in Teva Pharmaceutical*

Posted: Sunday, Dec 4, 2011 @ 11:46 am | Written by Eric Guttag | 10 comments

The novelty bar under 35 U.S.C. § 102(g)(2) has been characterized (accurately) as involving “secret prior art.” By “secret,” I mean that the patent applicant likely won’t even be aware of that “prior art” because it hasn’t been published (or is otherwise not publicly available to see). In fact, since the 1973 CCPA case of In re Bass, 474 F.2c 1276, 35 U.S.C. § 102(g)(2) (and its predecessor) has also been an annoying source of “prior art” for the purposes of obviousness under 35 U.S.C. § 103(a).

While having “secret prior art” undercut an effort to patent an invention may be frustrating for many patent applicants, yet another source of irritation is the doctrine of “inherency.” For example, the prior efforts of others can be invalidating “prior art” whether or not those “others” recognize the significance or relevance of the properties of that “prior” invention. (This frequently happens in the technical field of chemical compounds, and especially, drugs.) In fact, all that is required is that the “others” creating that “prior” invention appreciate that, in fact, they made it.

A Special Thank You to Our Guest Contributors!

Posted: Friday, Dec 2, 2011 @ 5:13 pm | Written by Gene Quinn | 3 comments

As you may have seen, has been named to the ABA Blawg 100, which recognizes the top 100 blogs on the Internet written by lawyers for lawyers.  This marks the third year in a row we have been honored by the American Bar Association Journal as a top 100 blog.

Now the voting begins. Last year we were voted the top IP Law blog and greatly appreciate the support we received.  Once again this year we are in the same category — IP Law — as is Professor Dennis Crouch’s widely popular PatentlyO blog.  If you are inclined to vote for us we would once again greatly appreciate your support.

Over the years has continued to try and add additional perspectives from a wide variety of guest contributors, ranging from well respected practicing attorneys and agents to high profile academics to inventors and pro-patent lobbyists. It is hard to imagine providing such depth of analysis on such an array of topics without having truly wonderful guest authors.  So we take this moment to say a very special thank you and to shine the spotlight on them. Each deserve to share in any recognition of  While I am loathe to single any guests out I would be remiss if I didn’t separately thank both Beth Hutchens (10 contributions) and Eric Guttag (9 contributions)!

Without further ado, here are the guest contributors in alphabetical order, along with their contributions for 2011.

Top 10 Locations the PTO Should Consider for Satellite Offices

Posted: Thursday, Dec 1, 2011 @ 8:56 pm | Written by Gene Quinn | 25 comments

Laguna Beach, CA, or anywhere in Orange County CA, gets my vote!

Just the other day the United States Patent and Trademark Office announced that they were seeking public input regarding where they should open 2 more satellite offices in addition to the one being opened in Detroit, Michigan sometime during 2012. The America Invents Act requires the Patent Office to open satellite locations provided funds are available. The Office sees the establishment of these satellite offices as an important factor in continuing efforts to recruit and retain a highly skilled workforce, reduce patent application pendency and enhance communication between the USPTO and the patent applicant community. But where should they be located?

In evaluating where to locate any new satellite offices the USPTO has set forth certain criteria that those submitting comments should keep in mind.  The factors specifically identified in the Federal Register Notice are: (1) Will the location increase outreach activities to better connect patent filers and innovators with the USPTO? (2) Will the location enhance patent examiner retention and provide a strong quality of life; (3) Will the location improve recruitment of patent examiners; (4) Will the location decrease the number of patent applications; (5) Will the location improve quality of patent examination; (6) Does the location have available office space; (7) Are there universities with strong engineering programs nearby? (8) Are there research facilities nearby? (9) Will there be a positive economic impact to the region?

USPTO Announces More PPH Agreements, China and Iceland

Posted: Wednesday, Nov 30, 2011 @ 12:07 pm | Written by Gene Quinn | 2 comments

Earlier today the United States Patent and Trademark Office announced what they are referring to as “landmark Patent Prosecution Highway Pilots” with China’s State Intellectual Property Office (SIPO).  David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the USPTO and SIPO Commissioner Tian Lipu announced the start of Paris Route and PCT Patent Prosecution Highway (PPH) pilot programs beginning on December 1, 2011.  Meanwhile, the USPTO, in a separate press release, also announced the launching of a new pilot project for the Patent Prosecution Highway (PPH) with the Icelandic Patent Office (IPO).

As with other PPH pilot programs, these new SIPO and IPO agreements will permit each office to benefit from work previously done by the other office.  The work-sharing benefits of the Patent Prosecution Highway are what every Patent Office around the world is after given the global demand for patents only continues to rise.  Work-sharing arrangements of one kind or another are virtually required given the reality that patents are more valuable than ever, more desirable than ever and due to legal requirements and litigation applications need to be far more detailed than even just 10 years ago.  Indeed, there is really no comparison to the level of disclose found in patent applications today compared with detail found in patent applications a generation ago.

Doing Business in China While Protecting Your Innovations

Posted: Tuesday, Nov 29, 2011 @ 6:02 pm | Written by Gene Quinn | 3 comments

It is on the minds of everyone in the business world, regardless of the subject matter of the business or technology involved. How exactly do you do business in China while maintaining a firm grasp on the intellectual property rights associated with your most valuable innovations? With over 1.3 billion people in China the market is quite attractive to many — if not all — businesses. At the same time it makes no sense to turn over the keys to your kingdom in order to only have a variety of Chinese companies competing with you domestically in China, as well as around the globe.

1.3 billion people simply cannot be ignored, that much is certainly true. In my experience, however, when potentially ridiculous sums of money are at issue people, including otherwise shrewd business executives, suddenly seem to lose double digit points off their IQ.  Believing that you can successfully navigate the potentially treacherous waters of doing business with China without careful planning and competent, experienced counsel is simply naive.

USPTO Seeks Comments on Future Locations for Satellite Offices

Posted: Tuesday, Nov 29, 2011 @ 3:10 pm | Written by Gene Quinn | 10 comments

The United States Patent and Trademark Office (USPTO) is interested in gathering information from the public on potential locations for future USPTO satellite offices and earlier today published a Federal Register Notice announcing the comment period.  The USPTO is required to establish satellite offices, subject to available resources, under Section 23 of the America Invents Act (AIA). In fact, as long as funding exists, it is the plan of the Patent Office to establish at least two more satellite offices in addition to the one slated for Detroit over the next three years.

The USPTO sees the establishment of satellite offices as an important component of their continued efforts to recruit and retain a highly skilled workforce, reduce patent application pendency and improve quality, and enhance communication between the USPTO and the patent applicant community. It is easy to understand why satellite offices would enhance efforts to recruit and retain patent examiners, after all there is a limited pool of technically sophisticated applicants and employees willing to locate in Northern Virginia and endure the ridiculous traffic, among other things.  Thus, satellite offices should make a position as a patent examiner more attractive, at least if locations such as Denver or California are considered, as they should be.