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A Landmark Case: The Aftermath of Myriad Genetics

Posted: Thursday, Apr 14, 2011 @ 2:52 pm | Written by Gene Quinn | 18 comments

Richard Marsh, Executive Vice President & General Counsel, Myriad Genetics

Next on the agenda at the BIO Intellectual Property Counsels Committee Conference meeting in Seattle is the so-called Myriad case, Association of Molecular Pathology v. U.S.P.T.O, moderated by Andrew T. Serafini, Ph.D., Partner, IP Group & Life Sciences Practice, Fenwick & West LLP.  I have been following the case closely since its beginning, so I am keenly interested in the case.  I am separately working on a “readers digest like” summary of the oral arguments that took place at the Federal Circuit on April 4, 2011, so look for that in the coming days.

The first speaker on the second panel was Debra Greenfield, an attorney and Adjunct Assistant Professor, UCLA Center for Society and Genetics.  It was a bit difficult for me to follow her presentation, oddly enough, because she was reading her presentation.  Time and time again it seemed as if she was phrasing her background of the case and what is at stake as one who supports the ACLU challenge, ending with she looks forward to defending her position in the question and answer session.  As it turns out, she is in favor the the ACLU position, which caught me by surprise.  Let’s face it, the BIO IP attorneys are not exactly a friendly audience for her, but kudos to the program committee for attempting to provide a balance perspective of the case despite the obvious biases (which I share) of those in the audience.

Stanford v. Roche: An Academic/Industry Collaboration Gone Wrong

Posted: Thursday, Apr 14, 2011 @ 12:45 pm | Written by Gene Quinn | 3 comments

Kenneth Dow, BIO IPCCC Chair and Vice President, Johnson & Johnson, opening the Conference

I am sitting in a ball room at the Hotel 1000 in downtown Seattle, Washington, attending the Biotechnology Industry Organization (BIO) IP Counsels Committee Conference.  The Conference kicked off yesterday with an excellent presentation giving an insider’s perspective of the U.S. Supreme Court and the Solicitor General’s Office, given by Traci L. Lovitt, a partner in the Boston office of Jones Day (more on this forthcoming).  This morning the first panel discussion is focusing on Stanford v. Roche, titled Who’s Rights Are They Anyway?  The first speaker, Maggie Shafmaster, Ph.D., Vice President and Chief Patent Counsel, Genzyme Corporation, lead off by pointing out something that everyone largely seems to agree with, namely that the facts of the case are still largely in dispute, which makes me wonder why would the Supreme Court take such a case.  Be that as it may, Shafmaster went on to say that this case is one that makes in-house attorneys and those representing Universities lay awake at night.  She characterized the case as “an academic/industry collaboration gone wrong.”  And we are off to the races!

Did the CAFC Miss the Real “Written Description” Issue in Crown Packaging?

Posted: Wednesday, Apr 13, 2011 @ 6:25 pm | Written by Eric Guttag | 5 comments

After the Federal Circuit ruled in Ariad Pharmaceuticals v. Eli Lilly there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112, some may have thought that all might be quiet on the “written description” front.  But the recent case of Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., suggests that all may no longer be quiet on that front.  In fact, I’ll express the “heretical” view that the Federal Circuit missed the real “written description” issue in this case, namely what is (or should be) the impact of the “characterised in that” (or as we Americans would phrase it “characterized in that”) language used in the common patent specification of the two patents involved in this case.

AIPLA Expresses Deep Concern Over USPTO Funding in CR

Posted: Tuesday, Apr 12, 2011 @ 6:46 pm | Written by AIPLA | Comments Off

ARLINGTON, VA — In April 12, 2011 letters to House and Senate leaders, the American Intellectual Property Law Association (AIPLA) expressed deep concern about the serious shortfall in the current legislation to fund the U.S. Patent and Trademark Office.

H.R. 1473, the Full-Year Continuing Appropriations Act, 2011, is the legislation reflecting the compromise on the Continuing Resolution to fund the government for fiscal 2011. The letters point out that the provisions of the bill related to the USPTO appropriate $100 million less than the projected user fee revenues to be collected, essentially diverting that money to other government programs. In addition, the bill lacks the appropriations “buffer” language included in previous bills to ensure that the Office may utilize the fee revenue that exceeds the original projected collections for the fiscal year.

USPTO to Host Clean Technology Partnership Meeting

Posted: Tuesday, Apr 12, 2011 @ 2:38 pm | Written by U.S.P.T.O. | Comments Off

The United States Patent and Trademark Office (USPTO) will host its first Clean Technology Partnership Meeting on Wednesday, April 27th to bring clean technology stakeholders together to share ideas, experiences and insights and provide a forum for discussion on how the USPTO can improve and expand on its clean technology programs. The meeting will be held at USPTO Headquarters in Alexandria, Va., from 1:00-5:00 p.m.

“Green technology innovations can help us protect our environment and improve our planet, and every day that an important new clean tech innovation is held back from the market represents a lost opportunity to create 21st century jobs and businesses,” Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said. “The feedback clean tech stakeholders provide is essential in our efforts to continuously improve the quality of our programs and services.”

Non Sequitur: We Need to Go Back to the Clinton Tax Rates

Posted: Tuesday, Apr 12, 2011 @ 10:18 am | Written by Gene Quinn | 24 comments

By now many have undoubtedly heard something about the ongoing budget battles on Capitol Hill. As a government shutdown was averted at the 11th hour on Friday evening, just as I predicted, attention has already started to turn to the much larger economic battles that loom, namely the vote to raise the debt ceiling and the fiscal year 2012 budget. In fact, Congressman Paul Ryan (R-WI) released the House Republican’s budget proposal for fiscal year 2012 early last week. The plan dubbed The Path to Prosperity already has a multitude of supporters and a multitude of critics. As this has started to unfold we will undoubtedly hear some ridiculous, half-baked comments from those who think they know better. The one that probably bothers me the most is one we hear so frequently: All we need to do is go back to the Clinton tax rates. It is amazing to me that there are those who can say this with a straight face.

USPTO Updates Registration Exam for Patent Practitioners

Posted: Monday, Apr 11, 2011 @ 1:37 pm | Written by Gene Quinn | 6 comments

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

An Interview with Sharon Barner, Former PTO Deputy Director

Posted: Sunday, Apr 10, 2011 @ 11:47 am | Written by John White | 1 Comment »

Sharon Barner

Sharon Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.

While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.

Learning from Apple Patent’s Newsreader for Mobile Devices

Posted: Friday, Apr 8, 2011 @ 6:10 pm | Written by Gene Quinn | 15 comments

Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.”  The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days.  While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained.  I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded.  It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

When reading a patent I never jump first to the claims, preferring to start to get an understanding of what the invention is and taking everything in before trying to tackle the claims.  This is typically helpful, I find, because the specification is the omnibus disclosure of the invention and works to support the language and terminology presented in the claims, which are nearly universally a subset of the overall invention disclosed in the specification.

USPTO to Remain Open Even if U.S. Government Shuts Down

Posted: Thursday, Apr 7, 2011 @ 8:16 pm | Written by Gene Quinn | 6 comments

Because of sufficient funding not linked to the current fiscal year, the United States Patent and Trademark Office will remain open for business and will continue to operate as usual through the close of business on Monday, April 18, 2011 even in the event of a government shutdown. The USPTO has enough reserves to operate for 6 business days even in the event of a government shutdown, and should a shutdown occur and continue longer than 6 days the USPTO anticipates that limited staff would still be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.  Thus, USPTO employees are not in any immediate risk of a furlough due to the ongoing fiscal year 2011 budget battle being waged between Speaker of the House John Boehner, Senate Majority Leader Harry Reid and President Barack Obama.