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Fordham Conference 2015 – Governments and IP

Lord Hoffman (former Court of Appeal judge and presently at Queen Mary University) spoke about what can be done to harmonise the law. He said that the governments of most jurisdictions accept that judges have some choice in how the law is developed. There is then a range of views of how much regard should be had of foreign decisions. Lord Hoffman stated that, although he thinks taking account of foreign judgments smacks of showing off, there are practical (and commercial) advantages in making English IP law the same as other jurisdictions (although he was less keen on this in constitutional or commercial law). In Europe there is advantage in the fact that the same text falls to be interprete [...]

New USPTO Patent Subject Matter Eligibility Guidelines Raise More Questions Than They Answer

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 [...]

U.S. Supreme Court Holds Isolated Human Genes May Not Be Patented

On June 13, 2013, the U.S. Supreme Court issued its long-awaited decision in the “ACLU/Myriad” gene patents case (Association For Molecular Pathology v. Myriad Genetics, Inc.). In a unanimous opinion authored by Justice Thomas, the Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.” Thus, the Court held that human genes may not be patented.


This case stems from a declaratory judgment action brought to challenge certain claims in seven patents related to Myriad’s discovery of the BRCA1 and BRCA2 genes, and t [...]

U.S. First-Inventor-To-File Laws Take Effect

The first-inventor-to-file provisions of the America Invents Act (AIA) took effect on March 16, 2013. While the effective date provisions for the first-inventor-to-file provisions are complicated, the new laws will apply to all U.S. applications with an earliest effective filing date on or after March 16, 2013, and also to U.S. applications that claim subject matter with an earliest effective filing date on or after March 16, 2013, even if such applications have an earlier priority date. Other changes to USPTO practice apply to all applications filed from now forward, even those that fall under substantive first-to-invent laws.

New Requirement For “Transition” Applications

The [...]

Submitting Publications In U.S. Patent Applications

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 take advantage of this new program.

The Statutory And Regulatory Framework

Section 8 of the America Invents Act amended 35 USC § 122 to provide for Preissuance Submissions. The USPTO’s implementing regulations are found in new 37 CFR § 1.290 and revised 37 CFR § 1.291. Key requirements and related st [...]

U.S. Patent System Changes Taking Effect September 16, 2012

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.


The following changes apply to U.S. patent applications filed on or after September 16, 2012:

  • Prosecution By Assignee
    An assignee (or party to whom the inventors are obligated to assign the invention) can act as the applicant. In such cases, the assignee (not the inventors) should execute a power of attorney document.
  • Inventor Oath/Declaration
    The executed inventor oath/declaration can be submitted at the close of prosec [...]
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