In two months, the U.S. patent system will begin its transition from the current “first to invent” system to a new “first-inventor-to-file” system. Inventors and applicants should be considering whether patent applications that may be ready for filing should be filed before or after the March 16, 2013 effective date of the U.S. first-to-file laws. …

On November 30, 2012, the U.S. Supreme Court granted certiorari in the “ACLU/Myriad” gene patenting case (Association for Molecular Pathology v. Genetics, Inc.), taking on the debate over the patent-eligibility of human genes. The Court will review the August 16, 2012 Federal Circuit decision that held for the second time that Myriad’s claims directed to isolated DNA…

In a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia found that the USPTO has been misinterpreting a provision of the Patent Term Adjustment (PTA) statute in a manner that under-calculates PTA for many patents in which a Request for Continued Examination was filed….

As of September 16, 2012, third parties have been able to make “Preissuance Submissions” of printed publications in pending U.S. patent applications. To date, the USPTO has received just over 100 Preissuance Submissions. This article looks at important timing and disclosure requirements that parties considering making such submissions should keep in mind when deciding whether to…

On September 16, 2012, inter partes review proceedings became available against U.S. patents and post-grant review proceedings became available against certain U.S. business method patents. In two weeks, seventeen petitions for inter partes review have been filed and eight petitions for post-grant review have been filed. This article takes a brief look at these new proceedings.

On August 16, 2012, just four weeks after it heard oral arguments, the U.S. Court of Appeals for the Federal Circuit issued its second decision in Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU “gene patenting”/BRCAI case). Once again, all judges on the three-judge panel agree that the diagnostic method claims based on “comparing”…

In a 2-1 decision issued August 3, 2012 in Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., the U.S. Court of Appeals for the Federal Circuit held that the safe harbor provisions of 35 USC § 271(e)(1) can shield the defendants from liability for patent infringement arising out of their use of patented methods to satisfy…

On Friday, July 20, 2012, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU “gene patenting”/BRCAI case), which is on remand in view of the U.S. Supreme Court decision in Mayo v. Prometheus. Reading the tea leaves from the judges’ questions and…

Practitioners and applicants have been wondering how the USPTO would respond to the July 20, 2012, U.S. Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., which held that Prometheus’ personalized medicine method claims could not be patented because they were directed to a law of nature, and so excluded from patent-eligibility under 35 USC…