• CalendarMay 8, 2018 – Symposium on Intellectual Property (George Washington University Law School, Pillsbury, NERA Economic Consulting, and Mayer Brown) – Washington, DC

    May 8, 2018 – "Intellectual Property Valuation and Damages: Nuts and Bolts in 2018" (The Knowledge Group) – 12:00 to 1:30 pm (ET)

    May 8, 2018 – Patent Quality Chat webinar – "Subject Matter Eligibility: Revised Guidance in view of Berkheimer v. HP, Inc." (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET)

    May 8-10, 2018 – Patent Fundamentals Bootcamp 2018: An Introduction to Patent Drafting, Prosecution, and Litigation (Practising Law Institute) – Chicago, IL

    May 9, 2018 – "Supplemental Examination Requests: Benefits and Limitations, Strategic Use — Assessing Enforceability of Patent Portfolios, Evaluating the High Burden" (Strafford) – 1:00 to 2:30 pm (EDT)

    May 10, 2018 – "Will the Supreme Court Step in Again in Helsinn v. Teva? Does a Sale of Confidential Materials Trigger the On-Sale Bar?" (Federal Circuit Bar Association) – 3:00 pm to 4:00 pm (EST)

    May 10, 2018 – European Patent Strategies (Intellectual Property Law Association of Chicago Corporate Committee and Weickmann & Weickmann) – 5:00 pm to 6:05 pm (CT), Chicago, IL

    May 15, 2018 – "USPTO Post-Grant Patent Trials 2018: Change & Recalibration" (Practising Law Institute) – San Francisco

    May 17, 2018 – "Patenting Antibodies at the EPO" (J A Kemp) – 15:30 (Greenwich Mean Time)

    May 17, 2018 – "Patent Exclusivity Health Checks for Biologics: Are Your U.S. Patents Ready to Maximize ROI?" (Strafford) – 1:00 to 2:30 pm (EDT)

    May 18, 2018 – "US-China: The Relationship and Concerns Raised in the Section 301 Investigation and Report" (Federal Circuit Bar Association) – 3:00 pm to 4:30 pm (EST)

    May 22, 2018 – "Sovereign Immunity and Patents at the PTAB and District Courts" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    June 13-15, 2018 – Patent Fundamentals Bootcamp 2018: An Introduction to Patent Drafting, Prosecution, and Litigation (Practising Law Institute) – New York, NY

    June 25-27, 2018 – Summit on Biosimilars (American Conference Institute) – New York, NY

    July 18-20, 2018 – Patent Fundamentals Bootcamp 2018: An Introduction to Patent Drafting, Prosecution, and Litigation (Practising Law Institute) – San Francisco, CA

    September 21, 2018 – "USPTO Post-Grant Patent Trials 2018: Change & Recalibration" (Practising Law Institute) – New York & Groupcasts in Philadelphia, Indianapolis, New Brunswick, NJ, Pittsburgh, and Mechanicsburg, PA

  • MBHB Logo 2McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "Sovereign Immunity and Patents at the PTAB and District Courts" on May 22, 2018 from 10:00 am to 11:15 am (CT).  In this presentation, Patent Docs author and MBHB attorney Kevin Noonan and MBHB attorneys James Lovsin and George "Trey" Lyons, III will discuss sovereign immunity as it applies to Native American Tribes in comparison with the several States and review the Allergan strategy for protecting patent franchises for blockbuster drugs, as well as similar efforts for high technology inventions, and consider the scope of Congressional authority on this question and the likelihood for legislative intervention.

    While there is no fee to participate, attendees must register in advance.  Those wishing to register can do so here.  CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.

  • USPTO SealThe U.S. Patent and Trademark Office will be offering the next webinar in its Patent Quality Chat webinar series from 12:00 to 1:00 pm (ET) on May 8, 2018.  The latest webinar, entitled "Subject Matter Eligibility: Revised Guidance in view of Berkheimer v. HP, Inc." will be hosted by USPTO Deputy Commissioner for Patent Examination Policy Bob Bahr, will discuss the USPTO's recently-issued memorandum implementing changes to examination procedure in view of the Federal Circuit's decision in Berkheimer v. HP, Inc., which provides clarification on the subject matter eligibility analysis.

    Instructions for viewing the webinar and additional information regarding the Patent Quality Chat webinar series can be found on the USPTO's Patent Quality Chat webpage.

  • J A KempJ A Kemp will be offering a webinar entitled "Patenting Antibodies at the EPO" on May 17, 2018 starting at 15:30 (Greenwich Mean Time).  Sarah Roques and Pamela Tuxwirth of J A Kemp will address the following topics:

    • When broad antibody claims can be obtained
    • How to approach inventive step when the target is known
    • What data to provide to support inventive step
    • Functional/epitope claims
    • Other routes to patentability

    Those wishing to register can do so here.

  • PLI #1Practising Law Institute (PLI) will be holding a program entitled "USPTO Post-Grant Patent Trials 2018: Change & Recalibration" in San Francisco (May 15) and New York (September 21).  Webcasts of both sessions will be offered, and groupcasts will be held in Philadelphia, Indianapolis, New Brunswick, NJ, Pittsburgh, and Mechanicsburg, PA on September 21.  The San Francisco session of the program will offer presentations on the following topics:

    • Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies
    • PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution
    • PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment
    • PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC
    • The Long Road: Patent Monetization in Silicon Valley – Licensing and Navigating Efficient Infringement

    The New York session of the program will offer presentations on the following topics:

    • Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies
    • PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution
    • PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment
    • PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC
    • Northeast Corridor: Bio/Pharma at the PTAB
    • Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

    Schedules for both sessions can be found at here.

    The registration fee for the program is $1,850.  Those interested in registering for the conference can do so at the PLI website.

  • Strafford #1Strafford will be offering a webinar entitled "Patent Exclusivity Health Checks for Biologics: Are Your U.S. Patents Ready to Maximize ROI?" on May 17, 2018 from 1:00 to 2:30 pm (EDT).  M. Paul Barker, Steven P. O’Connor, and Sanya Sukduang of Finnegan Henderson Farabow Garrett & Dunner will guide patent counsel on the essentials of patent exclusivity that are in critical need of independent checking, and discuss crucial health checks on U.S. patent exclusivity for biologics in Phase II efficacy trials and proceedings through large scale randomized Phase III clinical trials, submission of the BLA, and subsequent approval and marketing.  The webinar will review the following issues:

    • How should counsel respond if a health check uncovers sub-optimal protection or defects in a patent claim?
    • Are the BCPIA claims definite or enabled under the current standards?
    • Is there a need for supplemental examination to clear the path to enforceability?

    The registration fee for the webcast is $297.  Those interested in registering for the webinar, can do so here.

  • Federal Circuit Bar AssociationThe Federal Circuit Bar Association (FCBA) will be offering a webcast entitled "US-China: The Relationship and Concerns Raised in the Section 301 Investigation and Report" on May 18, 2018 from 3:00 pm to 4:30 pm (EST).  Terry Stewart of Stewart and Stewart will moderate a panel consisting of Erin Ennis, Senior Vice President, US-China Business Council; K.C. Swanson, Director, Global Policy, Telecommunications Industry Association; Owen Herrnstadt, Chief of Staff to the International President, International Association of Machinists and Aerospace Workers; and David Ross of WilmerHale.

    The webinar is complimentary for FCBA members and $50 (government/academic/retired) or $125 (private practitioner) for non-members.  Those interested in registering for the webcast, can do so here.

  • By Shin Hee Lee* and Anthony D. Sabatelli** —

    The cosmeceutical industry is ever more competitive and continues to grow with a myriad of new cosmeceutical products entering the market every day.  Well-established and new companies are busily adapting to new trends created by people's changing tastes.  The total revenue of the U.S. cosmeceutical industry has only been increasing since 2009, marking $62.46 billion in 2016.  While this revenue comes from a number of cosmeceutical product categories, skin care has always been the most profitable category, covering 36% of the global market.  In this article, we discuss some of the recent growth and trends in skin care cosmeceutical patents.

    It is often unknown that the 182 most recognized beauty brands in the world are actually owned by seven major cosmeceutical companies:  L'Oréal, Johnson and Johnson, Shiseido, Estée Lauder Companies, Unilever, Coty, and Procter & Gamble.  L'Oréal umbrellas the most brands with a total of 39 prevalent companies in an array of beauty stores.  These store brands are very well-known, including Kiehl's, Lancôme, The Body Shop, Urban Decay, and Maybelline.  On the other hand, the Estée Lauder Companies own internationally recognized luxury brands such as Clinique, Bobbi Brown, MAC, Jo Malone, Lab Series, and Glamglow.  These brands highly occupy the shelves in Sephora and other popular beauty vendors.  The plethora of products and the explosion of marketing venues suggests how competitive it can be for new cosmeceutical companies to succeed in the market.

    To be competitive in the cosmeceutical industry, a company, whether new, rising or established, should focus on establishing solid intellectual property (IP) rights.  IP rights protect and support elements that help companies distinguish their products from rival companies.  Furthermore, the number of patents can be a powerful marketing tool, especially when touting the "patented" technology used to develop the product.

    Because of the significance of IP rights in the cosmeceutical industry, there is currently an overwhelming number of cosmeceutical patents.  Skin care has the leading number of patents, correlating to its enormous global sales (projected to reach $130 billion by 2019).

    Anti-aging has been the most popular category within skin care, attributed to the high demand of products promoting youthful looks that defy a consumer's biological age.  The majority of anti-aging patents relate to inventions based on unique compositions of known or novel ingredients.  An assortment of vitamins like retinol (made from vitamin A), vitamin C, coenzyme Q-10, and alpha-hydroxy acids (AHAs) have traditionally been touted to have anti-aging efficacies.  However, with the recent beauty trend of "clean cosmeceuticals," some patentees have pointed at the toxicity of some complementary additives in these vitamins and have filed patents for supposedly more natural plant-based components.  Some anti-aging products contain peptides instead of vitamins as their main component.  A recent study has shown that defensins, a group of antimicrobial peptides that activate stem cells to produce new skin, provide incredible anti-aging effects.  Many reporters have been labeling defensins as "a game changer," and "the newest anti-aging weapon."  Patents on anti-aging formulations will likely surface in the near future.

    Another area of intense patent activity relates to cosmetic devices.  Portable home skin care devices for measuring and improving skin conditions have been increasingly patented and commercialized.  One of the pioneers that popularized hand-held devices was a company named Clarisonic (or Pacific Biosciences Laboratories), which owns 40 patents on their devices.  Clarisonic's iconic cleansing tool is a mechanically rotating face brush that oscillates back and forth over the skin to thoroughly remove any oil, debris, makeup and environmental pollutants.  Recently, Neutrogena has introduced small portable stick that treats acne using phototherapy.  Depending on the light color, the stick can treat different types of skin problems.  One futuristic skin care device on the rise is a mirror with built-in digital sensors that detect and analyze the skin's moisture, oiliness, and redness.  Devices that were only accessible at a dermatologist's office are increasingly becoming home-friendly.  We expect the skin care device patents continue to increase in the coming years, especially the design patents.

    Shown below are two tables summarizing some of the patent trends for cosmetics and recent devices.

    Table 1
    Table 2

    * Shin Hee Lee is a Ph.D. Candidate in the Chemistry Department at Yale University.  She is currently associated with the Yale Energy Sciences Institute, where she specializes in organic synthesis of novel light-harvesting dye molecules for solar cells.  Prior to attending Yale, Shin Hee obtained her B.S. in Chemistry with High Honors at the University of Michigan – Ann Arbor, during which she published patents and papers on developing synthetic methodologies for fluorinated small molecules.
    ** Dr. Sabatelli is a Partner with Dilworth IP

  • By Kevin E. Noonan

    Sweet PotatoHiram Bentley Glass and classical geneticists of the Twentieth Century elucidated some of the ways that genetics could inform regarding human populations and their history, using observations like genetic drift (famously, among the Amish) and the "founder effect."  The "genomics" revolution of the last thirty years has extended these observations, for human populations as well as many other animal and plant species (see, e.g., "Genetic Assessment of Squash Genomes in Related Species"; "The Domestication History of Apples Revealed by Genomic Analysis"; and "Domestic Cat Genome Sequenced").  Recently, several outstanding questions regarding the genetics of sweet potato were resolved, in a report in Current Biology, entitled "Reconciling Conflicting Phylogenies in the Origin of Sweet Potato and Dispersal to Polynesia," resulting from genomic and chloroplast DNA analyses that establish the phylogenetic, temporal and geographical relationships between this important crop species and its wild naturally occurring relatives.

    The paper, from an international group of researchers* from the University of Oxford, Oregon State University, International Potato Center (Lima, Peru) and Duke University, used genome skimming and target DNA capture on 199 specimens comprising sweet potato (Ipomoea batatas) and all its wild relatives (I. trifida, I. triloba, I. ramosissima, I. cordatotriloba, and I. leucantha).  One of the most consumed crops worldwide, the species originated in the Caribbean region (Central and northeastern South America and the islands comprising the region) but is also endemic to Polynesia.  In addition to the evolutionary relationship between I. batatas and its wild relatives, this geographical distribution pattern has long raised the question of whether dispersion occurred without human intervention (wind, water, birds) or whether there were humans transiting the Pacific much earlier than anthropological evidence suggests.  The genetic evidence shows that human intervention is not necessary to explain sweet potato presence in Polynesia based on comparisons of the relationship (and divergence) of the Polynesian species (Ipomoea littoralis Blume) with I. batatas and other New World members of its family.

    The researchers report that their dataset consisted of 199 individuals representing all sixteen species in Ipomoea series Batatas and twenty-four other species across the Ipomoea genus.  These included fresh samples growing contemporaneously as well as herbarium specimens dating back to 1769.  Probes for 605 putative single copy nuclear regions of Ipomoea were derived from a comparison between genomic information from I. lacunosa and coding sequence-restricted data from the related Solanum tuberosum (potato).  The team interrogated genomic regions with a one-to-one match at 70% identity along at least half the length of a Solanum CDS and the results were filtered to retain Ipomoea loci that were at least 1000 bp long.  From these loci 100 bp-long RNA probes were developed, excluding probes with GC content < 25%.  In addition, the researchers obtained complete chloroplast DNA sequences from each specimen.

    From these comparisons the scientists concluded that the I. batatas sweet potato species is most closely related to I. trifida.  Speciation arose from a first autohexaploidy event, with the related species having the following family tree set forth in A:

    Figure 2_lrg
    Muñoz-Rodríguez et al., 2018, Current Biology 28(8): 1246-56, Figure 2

    Sweet potato is also the only member of this extended family whose evolution contains an autohexaploidy event.  This origin was supported by an analysis of the six alleles in each I. batatas genome, which the researchers found were more closely related to each other than to any other species (shown in B).

    When did I. batatas diverge from I. trifida?  Using nuclear DNA comparisons over 21 nuclear regions, the researchers estimated that divergence occurred at least 800,000 years ago; there was also evidence of a population bottleneck ~640,000 years ago.

    Whole chloroplast genome analysis was performed and revealed two genetically distinct lineages, with one (termed CL2) being more closely related to chloroplasts contained in I. trifida.  The relationship between the two chloroplast species compared with chloroplasts from I. trifida reported showed no shared insertion/deletion events (indels) between CL1 and CL2, but that I. batatas CL2 chloroplasts shared indels in common with I. trifida chloroplasts.  The results of these analyses suggested that the sweet potato species had undergone two speciation events:  the first, autohexaploidy from an I. trifida-like ancestor, followed by later introgresssion (occurring within about 56,000 years from the autohexapolidy event) by I. trifida, resulting in two populations of chloroplasts in natural species.  The Figure represents this history:

    Figure 4_lrg

    Muñoz-Rodríguez et al., 2018, Current Biology 28(8): 1246-56, Figure 4

    This Figure shows two alternative histories to explain the two chloroplast lineages in natural populations, with the evidence being more consistent with Figure C, resulting in an I. batatas species having CL1 and Cl2 chloroplasts.

    Turning to the genetic evidence for Polynesian dispersion (which extends today from Polynesia to Madagascar), comparison between the Ipomoea littoralis Blume species and I. batatas indicated (through genetic differences that would have been familiar to Bentley Glass and colleagues) that the sweet potato dispersed to Polynesia 111,500 – 139,000 years ago, predating human contact and putting to rest speculation for the occurrence of trans-Pacific exploration by Polynesia populations earlier than anthropological and other more conventional data suggest.

    One of the benefits noted by the scientists in their paper is the practical consequence that, by knowing the relationships between sweet potato and its relatives it may be possible to improve production or other aspects of breeding for a commercially important crop.  More broadly, though, researches such as these extend to more quotidian questions the reach of modern genetic analysis to address long-standing historical conundrums (both human and natural) that were hoped for by the pioneers of the genomics revolution.  Indeed, in view of the transitory nature of history and its artifacts, it is likely that many such questions can only reliably be answered from the history of life written in the genetic code of the organisms that have survived (which makes preserving them all the more important).

    *Pablo Muñoz-Rodríguez, Tom Carruthers, John R.I. Wood, Bethany R.M. Williams, Kevin Weitemier, Brent Kronmiller, David Ellis, Noelle L. Anglin, Lucas Longway, Stephen A. Harris, Mark D. Rausher, Steven Kelly, Aaron Liston, and Robert W. Scotland

    Image of Ipomoea batatas, Sweet Potato by Llez, from the Wikimedia Commons under the Creative Commons Attribution-Share Alike 3.0 Unported license.

  •  By Donald Zuhn

    IPLACIn a letter sent to U.S. Patent and Trademark Office Director Andrei Iancu earlier this month, the Intellectual Property Law Association of Chicago (IPLAC) presented its proposal for a revised version of 35 U.S.C. § 101.  IPLAC described its proposal as a harmonized version of revisions to § 101 proposed by the Intellectual Property Owners Association (IPO) and American Intellectual Property Law Association (AIPLA), which IPLAC indicated "represent the most straightforward and comprehensive revisions to Section 101."  In crafting a harmonized version of § 101, IPLAC sought "to combine the recommendations from IPO and AIPLA into a single proposal furthers the current dialog regarding possible Section 101 revisions that can address the ambiguity and uncertainty recent Supreme Court precedent has created."

    The IPLAC proposal reads as follows:

    101(a) Eligible Subject Matter: Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

    101(b) Sole Exceptions to Subject Matter Eligibility: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole exists in nature independently of and prior to any human activity, or exists solely in the human mind. In determining eligibility, each claimed invention shall be considered as a whole.

    101(c) Sole Eligibility Standard: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to (i) the requirements or conditions of sections 102, 103, and 112 of this Title, (ii) the manner in which the claimed invention was made or discovered, or (iii) the claimed invention’s inventive concept.

    In its letter to Director Iancu, IPLAC declared that "[o]ver the last few years, the Supreme Court has been injecting ambiguity into the Section 101 subject-matter eligibility requirement, moving farther away from the language of the statute itself," adding that "[t]he recent patent eligibility case law is confusing and creates uncertainty as to both the availability of future patents and the validity of existing patents."  Expressing the belief that "judicial interpretation is unlikely to correct existing ambiguity and uncertainty," and arguing that subject matter eligibility should not "be subject to changing definitions developed and adjusted by courts over time," the association seeks Congressional intervention to "clarify[] and re-establish[] the distinct role of section 101 in limiting patent eligibility to practical uses of processes, machines, manufactures, and compositions of matter as recited in the statute."

    IPLAC also provided a section-by-section comparison of its proposal with the current statutory text of § 101 as well as the IPO and AIPLA proposals, along with comments regarding the language that IPLAC used in its own proposal.  For example, with respect to IPLAC's decision to replace the phrase "subject to the conditions and requirements of this title" in the current text of § 101 with the phrase "subject only to the exceptions, conditions, and requirements set forth in this Title" (emphasis in IPLAC's comments), the association noted that the revised language "makes clear that the conditions and requirements of patentability are set forth in the patent statute, and the conditions and requirements set forth in the statute are the only conditions and requirements of patentability," adding that "[t]his means that Congress has not granted the USPTO nor the courts the ability to create its own conditions and requirements of patentability that are not expressly set forth in the patent statute."  In addition, IPLAC explains that § 101(c) of its proposal "addresses the increasing problem with the USPTO and courts confusing patent eligibility with other standards under the Patent Act," and "expressly prohibits the USPTO and courts from determining patent eligibility by considering whether the claimed invention, in whole or in part, include an 'inventive concept'" (emphasis in IPLAC's comments).

    For additional information regarding this and other related topics, please see:

    • "AIPLA Proposes Legislative Changes to 35 U.S.C. § 101," May 16, 2017
    • "ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee," March 29, 2017
    • "What to Do about Section 101? IPO Provides Its Answer," February 9, 2017