The UK IPO has applied the decision of the CJEU in Brüstle on stem cells in a recent case that is likely to lead to more judicial comment on the patentability of stem cell inventions. In International Stem Cell Corporation*, the applicant appealed the Examiner’s rejection of two patents, relating to methods of producing human stem cells and corneal tissues derived from such stems cells, where those stem cells are produced using parthenogenesis (i.e. the development of an embryo without fertilisation) to activate a human oocyte.

The Hearing Officer (who hears internal appeals at the UK IPO) therefore had to apply the CJEU’s decision in Brüstle, where the CJEU had sought to define “hum [...]

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” or “analyzing” DNA sequences are not patent-eligible and that the drug screening method claim is patent-eligible. The majority holds that all of the “isolated DNA” claims are patent-eligible, including those encompassing genomic DNA. Judge Bryson once again dissented with regard to the genomic DNA claims, but agreed with the maj [...]

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 comments, I think the panel decision will depend on whether Judge Moore again concurs with Judge Lourie on the patent-eligibility of isolated DNA, or whether she feels compelled by Mayo to join Judge Bryson, who would invalidate the claims. You can listen to the recording of the oral arguments here, and you can read my full recap of the oral arguments on [...]

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 § 101.  Now the USPTO has issued internal guidance to the Examining Corps, in a memorandum entitled 2012 Interim Procedure for Subject Matter Eligibility Analysis 0f Process Claims Involving Laws of Nature.  The guidelines walk a careful line between following Supreme Court precedent without eviscerating the ability [...]

On 20 March 2012, the Tribunal de Grande Instance of Paris rendered its decision in the case relating to raloxifene, a molecule useful for treating or preventing osteoporosis in post-menopausal women, opposing Teva to Eli Lilly.

This decision raises many questions, first concerning drug patents in particular (patentability of second medical use, patentability of the resolution of a bioavailability problem or of a dosage?) but also concerning the liberties which the Court takes with the grounds of invalidity of European patents and European patents French designations.

The American company Eli Lilly is the holder of two European patents, EP 0 584 952 and EP 1 438 957, relating to the use of [...]

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. While such method claims are not patent-eligible in many countries, the Supreme Court decision is significant in the context of U.S. patents, where diagnostic and therapeutic methods are generally patentable.  Indeed, the Supreme Court’s decision in Prometheus invalidated claims that the Federal Circuit had upheld twice.

In reaching its decisi [...]