The next wave of U.S. patent reform changes embodied in the Leahy-Smith America Invents Act takes effect on September 16, 2012. The following is a list of some key changes that may impact granted, pending and new U.S. patent portfolios.
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…
While many countries have laws against “double patenting” that prevent an Applicant from obtaining more than one patent on the same invention, the U.S. also bars Applicants from obtaining a second patent on an invention that is deemed to be an obvious variation of an invention claimed in a granted patent. The judicially created doctrine…
Last month both the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit issued important decisions relating to method of use patents in the Hatch-Waxman Abbreviated New Drug Application (ANDA) patent litigation framework. These cases underscore unique aspects of method of use patents in the ANDA context.
In ResQNet.com, Inc. v. Lansa, Inc. (Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit held that patent litigation settlement agreements can be relevant in a different proceeding to the issue of the reasonable royalties that may be owed by a different infringer of the same patent(s). Last week, in In re…
On March 20, 2012, the U.S. Supreme Court issued a unanimous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., holding that Prometheus’ claims directed to methods of optimizing the dose of specific drugs used in the treatment of specific conditions are invalid under 35 USC § 101 because they impermissibly claim laws of nature….
The “first-to-file” provisions of the United States “America Invents Act (AIA)” take effect on March 16, 2013. Because of other changes to the U.S. patent system, this date will be just as important to patent applications being filed around the world as it will be to those being filed in the United States. Here, I…
