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Category: Utility

  • Guest Post: The U.S. Government Continues to Have “Serious Concerns” with Canada’s Heightened Patent Utility Requirements

    By Canadian Patent Utility Coalition* — While the United States and Canada share a border, common values and a strong commitment to international trade and security issues, many are surprised to learn that protection of intellectual property (IP) is a source of significant friction in our relationship.  Indeed, in its 2014 annual "Special 301" report…

  • News from Abroad: Utility under Canadian Patent Law and the Doctrine of Sound Prediction

        By Ariadni Athanassiadis, Catherine Lemay, and Claire Palmer — In Canada, for subject matter to be patentable, it must be novel, inventive, and have utility.  A patent will fail for lack of utility if it can be shown that "the invention will not work, either in the sense that it will not operate at all…

  • In re Fisher (Fed. Cir. 2005)

    ESTs Unpatentable for Failure to Satisfy 35 U.S.C. § 101 Where Function of Underlying Gene Is Unknown     By Sherri Oslick — In an opinion of great import to biotechnology patent law, the Federal Circuit affirmed the decision of the Board of Patent Appeals that denied a patent to five expressed sequence tags (ESTs)…

  • In re Fisher: EST Utility Redux

        By Donald Zuhn — On Tuesday, the Federal Circuit will hear In re Fisher, in which the Court will address the utility requirement for the first time since the Patent Office set forth revised Utility Examination Guidelines in January 2001.  Specifically, in Fisher, the issue of patentable utility is being raised with respect…