Posts Tagged: "Association for Molecular Pathology v. Myriad"

Tillis’ Promised Patent Eligibility Bill Would Overrule Myriad, Mayo

Today, Senator Thom Tillis (R-NC), the Ranking Member of the Senate IP Subcommittee, released the first draft of the Patent Eligibility Restoration Act of 2022, which if enacted would, at a minimum, overrule the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012)…. This legislation would absolutely be a solution to many of the patent eligibility problems that have plagued the industry for the last decade. Of course, if the tech giants in Silicon Valley think this will hurt them the bill will be killed, period.

Patent Eligibility of Diagnostic Tools: Utility as the Key to Unlocking Section 101

A petition for certiorari was filed on October 1 in the case of Athena Diagnostics v. Mayo Collaborative Services asking the question: “Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.” The petitioners hinge their argument throughout the brief on the novel beneficial utility of their claimed method…. However, benefit has not always carried the day in recent eligibility analyses….. Patent eligibility, considered to be the most important question facing the patent system, poses insidious problems under current jurisprudence to some of the most beneficial cutting-edge technology available today. What is most curious is that this problem apparently can be solved simply by reaching back to the foundations of modern patent law and the underlying requirement that inventions be “useful,” a term that has been baked into the statutory provisions since the first patent act.

Will SCOTUS Solve the Section 101 Problem with Athena? These Patent Experts Hope So

Athena Diagnostics filed its petition for certiorari with the U.S. Supreme Court yesterday in Athena Diagnostics v. Mayo Collaborative Services. There is a strong argument for the Court to grant the petition, and patent stakeholders on all sides are sure to weigh in via amicus briefs over the next month. The petition could represent the best chance for clarifying Section 101 law in the near-term, since patent reform efforts on the topic have been seemingly stalled. Below are a few initial reactions from the patent community to Athena’s arguments.

Boston Patent Law Association Announces Support for IPO-AIPLA Section 101 Legislative Fix

The Boston Patent Law Association (BPLA) has announced its support for a proposal for a legislative fix to 35 U.S.C. § 101, the statute governing basic patentability in U.S. patent law, which was jointly offered earlier this year by the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA). The BPLA now becomes the latest patent law organization to support the proposed legislative amendment to Section 101 that is designed to address major uncertainties in patentability stemming from various cases decided in recent years by the U.S. Supreme Court.

USPTO issues guidance on patent eligibility of method of treatment claims in light of Vanda Pharmaceuticals

On June 7, 2018, the USPTO issued new guidance to its examining corps in the form of a memorandum discussing the Federal Circuit’s April 13, 2018 decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Circ. 2018). The memo indicates that it is intended to “addresses the limited question of how to evaluate the patent eligibility of ‘method of treatment claims’ in light of the Federal Circuit decision in Vanda” and also states, perhaps in a nod to the leadership of new USPTO Director Andrei Iancu, that “[t]he USPTO is determined to continue its mission to provide clear and predictable patent rights in accordance with this rapidly evolving area of the law, and to that end, may issue further guidance in the area of subject matter eligibility in the future.”