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 [...]
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
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 [...]
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.
PATENT PROSECUTION CHANGES
The following changes apply to U.S. patent applications filed on or after September 16, 2012:
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 September 16, 2011, President Obama signed the Leahy-Smith America Invents Act into law, making the most sweeping changes to U.S. patent law since at least the 1950’s. Many of the provisions can be broadly classified into those that serve the goal of international harmonization (first-inventor-to-file), those that target patent quality concerns (pre-issuance submissions, inter partes review, post grant review), and those that seek to rein in litigation costs (limitations on joinder). This article provides a brief overview of the many different changes, their effective dates, and the USPTO’s rulemaking process.
America Invents Act Effect Dates
Different provisions of the Ac [...]