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Jay S. Pattumudi

is counsel at Lucas and Mercanti, LLP, with several years of patent counseling, opinion and prosecution experience. He has prosecuted patent applications in various technological fields including biotechnology, chemical and pharmaceutical areas, material science, mechanical matters and medical devices.

This article is for general information and is not intended to be and should not be taken as legal advice.

For more information or to contact Jay, please visit his Firm Profile Page.

Recent Articles by Jay S. Pattumudi

Lessons of Wisdom Following Athena SCOTUS Denial and October 2019 Patent Eligibility Guidance Update

This article relates to key practice pointers for making a claim patent-eligible subject matter according to the U.S. Patent and Trademark Office’s (USPTO’s) October 2019 Patent Subject Matter Eligibility Guidance Update (October 2019 PEG Update). The October 2019 PEG Update expands on the January 2019 PEG (Patent Subject Matter Eligibility Guidance). In view of the continued denial of cases involving patent subject matter eligibility, such as Athena Diagnostics, Inc. v. Mayo Collaborative Services, 915 F.3d 743 (Feb. 6, 2019) by the U.S. Supreme Court, patent practitioners and clients alike need to pay more attention to the issued guidance documents and relevant Federal Circuit case law. Accordingly, one needs to have strategies in place for dealing with compliance of patent claims with 35 U.S.C. § 101.

Inherent obviousness necessitates specific motivation to modify lead compound in pharma process due to surprising, unexpected results

Inherent obviousness cannot be based on what the inventor thought, and, in addition, the results in a particular case may not be inherently obvious depending on what was expected by a person of ordinary skill. The court pointed out “’the mere fact that a certain thing may result from a given set of circumstances is not sufficient’ to render the results inherent.” Millennium Pharmaceuticals, 2017 WL 3013204, at *6 (citations omitted by author). The court also held that it is never appropriate to consider “what the inventor intended when the experiment was performed,” even though Millennium “conceded as a matter of law that the ester is a ‘natural result’ of freeze-drying bortezomib with mannitol.” Id. Thus, hindsight reasoning should never be applied and, obviousness is “measured objectively in light of the prior art, as viewed by a person of ordinary skill in the invention.”