Under U.S. patent laws, the 20-year term of a patent can be extended if the USPTO fails to meet certain timeliness benchmarks during the patent examination process. The statute provides for Patent Term Adjustment (PTA) equal to the number of days of USPTO delay, less the number of days of applicant delay. The statute defines taking more than three months to respond as one type of applicant delay, and delegates authority to the USPTO to define other circumstances that amount to applicant delay, which the USPTO has done in 37 CFR § 1.704. While many of the USPTO’s circumstances are not surprising, one category in particular can result in PTA deductions for actions made to advance prosecution. [...]
Last week, in In Re Roslin Institute, the U.S. Court of Appeals for the Federal Circuit held that cloned cattle, sheep, pigs and goats are non-patent eligible subject matter under 35 USC § 101. While the result that these cloned animals cannot be patented may not be surprising, the basis for the court’s finding–that the claimed subject matter was ineligible under the “product of nature” doctrine, has some scratching their heads. A more logical way to understand the decision is to read the court’s holding as finding that the cloned animals are non-patent eligible subject matter because they cannot be distinguished from naturally occurring animals.
The patent application at iss [...]
Pursuant to a U.S. White House initiative aimed at addressing the “challenges from Patent Assertion Entities (PAEs)” and stemming the economic drain of meritless patent litigation, the USPTO has issued propose rules to require patent applicants and patent owners to disclose patent ownership information during and after patent prosecution and during any Patent Trial and Appeal Board proceedings. Written comments on the proposed rules are due by April 24, 2014 (extended from the original March 25 deadline). While many patent offices require disclosure of the entity entitled to pursue a patent, the proposed USPTO Attributable Owner rules could go much farther, and could be difficult and costl [...]
The USPTO has issued new Guidance For Determining Subject Matter Eligibility to help examiners apply the principles of Myriad and Prometheus to any claim “reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.” The guidelines focus on a “signficantly different” test, and include lists of factors that weigh towards and against patent eligibility. The guidelines also include several examples applying the new analytical framework to sample claims. The guidelines do not apply to claims that raise “abstract idea” issues, which are still to be examined under MPEP 2106(II).
This article delves into the details of the guidelines, and you can read a [...]
Last week, the Patent Trial and Appeal Board of the U.S. Patent Office (PTAB) issued eight decisions in Inter Partes review and Covered Business Method proceedings, in each case invalidating at least some of the challenged claims of the patent at issue. That brings to 15 the total number of patents invalidated in an Inter Partes review or Covered Business Method proceeding since those proceedings became available on September 16, 2012, and keeps at 0 the number of proceedings decided in favor of the patent holder.
While many aspects of post-grant proceedings are still evolving, we have seen enough interim rulings and final decisions to draw a few general conclusions.
The Federal Circuit decision in Novatris AG v. Lee, Nos. 2013-1160, -1179 (Jan. 15, 2014), interpreted 35 USC § 154(b)(1)(B)(i) as it relates to the impact that a Request for Continued Examination (RCE) has on a PTA award for the USPTO’s failure to grant a patent within three years of its filing date (so-called “B delay” PTA). The court partly upheld and partly reversed the USPTO’s interpretation of the statute, rendering a decision that could mean an additional several months of PTA for impacted patents.
The Statute At Issue
The statute at issue in this case is 35 USC § 154(b)(1)(B)(i), which provides:
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.- Subj [...]