Patent Docs

USPTO Issues Memo on AMP v. Myriad to Examining Corps

June 13, 2013

By Donald Zuhn —

On the same day that the
Supreme Court handed down its decision in Association for Molecular
Pathology v. Myriad Genetics, Inc., the U.S. Patent and Trademark Office issued a one-page memorandum to its Patent Examining Corps to provide
preliminary guidance on the decision.
The memo from Andrew Hirshfeld, the Deputy Commissioner for Patent
Examination Policy, notes that in Myriad,
"the Supreme Court held that claims to isolated DNA are not
patent-eligible under 35 U.S.C. § 101," and that the decision "significantly
changes the Office's examination policy regarding nucleic acid-related
technology" (emphasis in original).
The memo advises the examining corps that:

As of today,
naturally occurring nucleic acids are not patent eligible merely because they have
been isolated. Examiners should now
reject product claims drawn solely to naturally occurring nucleic acids or
fragments thereof, whether isolated or not, as being ineligible subject
matter under 35 U.S.C. § 101. Claims
clearly limited to non-naturally-occurring nucleic acids, such as a cDNA or a
nucleic acid in which the order of the naturally-occurring nucleotides has been
altered (e.g., a man-made variant sequence), remain eligible. Other claims, including method claims, that
involve naturally occurring nucleic acids may give rise to eligibility issues
and should be examined under the existing guidance in MPEP 2106, Patent Subject Matter Eligibility.

(emphasis in original).

The memo concludes by
noting that "[t]he USPTO is closely reviewing the decision in Myriad and will issue more comprehensive
guidance on patent subject matter eligibility determinations, including the role
isolation plays in those determinations."

Patent Docs thanks Hal Wegner for alerting the patent community to the memorandum.
Supreme Court Issues Decision in AMP v. Myriad

June 13, 2013

Association for Molecular Pathology v. Myriad Genetics, Inc. (2013)

By Donald Zuhn —

In a much anticipated decision,
the Supreme Court issued its opinion this morning in Association for Molecular Pathology v. Myriad Genetics, Inc. In an opinion by Justice Thomas, joined by
Chief Justice Roberts, Justices Kennedy, Ginsburg, Breyer, Alito, Sotomayor,
and Kagan, and Justice Scalia concurring in part, 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 determined that cDNA is patent eligible
because it is not naturally occurring.

Noting that "[i]t is
undisputed that Myriad did not create or alter any of the genetic information
encoded in the BRCA1 and BRCA2 genes," the Court acknowledged that
"[t]o be sure, [Myriad] found an important and useful gene," but
indicated that "separating that gene from its surrounding genetic material
is not an act of invention."
Justice Thomas also stated that Myriad's claims were not "saved by
the fact that isolating DNA from the human genome severs chemical bonds and
thereby creates a non-naturally occurring molecule" because "Myriad's
claims are simply not expressed in terms of chemical composition, nor do they
rely in any way on the chemical changes that result from the isolation of a
particular section of DNA."

The Court, however, also
determined that "cDNA does not present the same obstacles to patentability
as naturally occurring, isolated DNA segments." In particular, Justice Thomas explained that "cDNA
retains the naturally occurring exons of DNA, but it is distinct from the DNA
from which it was derived," and therefore, "cDNA is not a 'product of
nature' and is patent eligible under §101." Justice Thomas did provide one
caveat, however, noting that "insofar as very short series of DNA may have
no intervening introns to remove when creating cDNA," under such circumstance,
"a short strand of cDNA may be indistinguishable from natural DNA."

Importantly, the opinion
concludes by stating that "[i]t is important to note what is not implicated
by this decision." In addition to
noting that the case did not involve an innovative method of manipulating genes
while searching for the BRCA1 and BRCA2 genes or new applications of
knowledge about the BRCA1 and BRCA2 genes, the Court also indicated that it did
not consider the patentability of DNA in which the order of the naturally
occurring nucleotides has been altered.
Instead, the Court indicated that it was "merely hold[ing] that
genes and the information they encode are not patent eligible under §101 simply
because they have been isolated from the surrounding genetic material."

Patent Docs will provide additional analysis of the opinion in a subsequent post.
When NPR Podcasters Hit the Patent System

June 12, 2013

By
Andrew Williams —

There
has been a lot of discussion recently in the mainstream press regarding the
U.S. patent system and its perceived failings. The current outcries stem from the apparent proliferation of "Patent
Trolls," also known by the less derogatory term Patent Assertion Entities
(or PAEs). Prompted by this apparent
threat, President Obama has proposed a series of legislative recommendations
and executive actions, and Congress has introduced several new pieces of legislation,
likely precipitated by the remarks of the President earlier this year. In fact, the Chief Judge of the Federal
Circuit, Judge Randall Rader, recently wrote an Op-Ed piece for The New York
Times, with Colleen V. Chien and David Hricik, suggesting that judges might
have the ability to curtail trolls by making them pay for abusive litigation ("Make Patent Trolls Pay in Court," New York Times, June 5, 2013). Judge Rader explained that Section 285 of the
Patent Act and Rule 11 of the Federal Rules of Civil Procedure gives judges
the authority to shift the cost of litigation abuse from the defendant to the
trolls. It will be
interesting to see if anything changes based on this response from all three
branches of the U.S. government.

Nevertheless,
probably no one would argue that there has been in increase in abusive patent
litigation in recent history, and that at least some of these problems stem
from non-practicing entities. However,
it is clear that the mainstream media is not providing a balanced analysis of
the issues involved, tending to quickly label any individual or organization
that asserts its patent rights as a troll. Lost in this discussion is a presentation of the merits of the patent
system and the potential advantages of non-practicing entities (as even
President Obama report acknowledged). For example, NPR has mounted what appears to be an all-out assault on
the allegedly "broken" patent system. This recent barrage of criticism was anchored by an episode of "This
American Life," which aired a little over a week ago and focused almost
exclusively on a single patent case stemming from an investigation of
Intellectual Ventures (we provided some commentary on this episode; see "'When the Patent System is Attacked!' — The White House Task Force on High-Tech Patent Issues"). Shorter versions of this episode have been featured on other public
radio shows since that time.

One example
that this episode touched on briefly was about a patent holder that has been
asserting one of his patents against prominent podcasters, alleging that he invented podcasting back in the mid-'90s. To further elaborate on this story, NPR's own podcast, "Planet
Money," released an episode on May 31, 2013, entitled "When Patents
Hit the Podcast." In this episode,
Planet Money host Zoe Chace and correspondent Robert Smith explored the story
of inventor Jim Logan and his company Personal Audio LLC ("Personal Audio"). Personal Audio had recently obtained a
favorable jury verdict against Apple for infringing patents listing Mr. Logan
as an inventor. The parties later
settled. Mr. Logan has now turned his
attention to podcasters themselves, thereby prompting the story. The podcast did include a disclaimer that
Planet Money had not been sued by Personal Audio, nor had it been approached
about obtaining a license. However, the
clear implication was that if podcasters could be sued, anybody else could
also. In fact, during the Podcast, Mr.
Logan's licensing attorney, Richard Baker, joked with Ms. Chace that because she
had a playlist of summer songs, she owed him 15 cents. "OK, sounds kind of scary, but he was
actually joking," Ms. Chace
explained.

The
episode was crafted to paint Mr. Logan in the worst possible light. Listeners to the podcast unfamiliar with the
patent system would definitely come away from the episode believing that Mr.
Logan was attempting to hijack somebody else's idea and extort money out of
them. This story began in the mid-'90s,
when Mr. Logan had the idea to provide audio content to customers in an
episodic fashion. He envisioned that
this could be accomplished over the internet, but unfortunately the technology had
not caught up with him yet. Therefore, he
established a business offering magazines on tape, which he named Personal
Audio, by which customers could select different stories from different content
providers and an audio version of those stories would be delivered on cassette
tape. This was mockingly referred to as the
first podcast. Mr. Logan applied for a
patent, but his business never got off the ground, and all of his attempts at
developing a player for digital content failed. Mr. Logan had other ideas, though, such as pausing live TV (think TiVo),
deep-tagging in videos (think YouTube), and enhancements to touch screens
(which he sold to 3M). But, except for
the last one, all were deemed failures by the podcast.

Years
later, Mr. Logan and his attorney discovered that Apple was utilizing a playlist
in most of their products, and that this playlist functioned essentially how
Mr. Logan had envisioned it when he filed his patent application. After successfully suing Apple, Mr. Logan was
said to have set his sights on the podcasters themselves. First, he filed a divisional application with
claims that could more easily be read on podcasting. Of course, Ms. Chace didn't use the word
divisional application, but explained it in a more sinister manner ("[S]o
he pulled up the patent and added to it to make sure the part he thought
covered podcasting was emphasized"), and Mr. Smith expressed surprise that
it was completely legitimate to go back and "tweak" your patent. After obtaining this divisional patent in
February 2012, Mr. Logan approached select podcasters, such as Marc Maron of
the WTF podcast, to inquire about licensing his patent. When he was asked about these threats, Mr.
Maron suggested that his podcast might have to shut down if they were carried
out. Personal Audio has filed suit
against several podcasting organizations, including ACE Broadcasting Network,
LLC, distributors of "The Adam Carolla Show," one of the most
successful podcasts. The Planet Money
podcast concluded with an interview of Julie Samuels of the Electronic Frontier
Foundation ("the EFF"), an organization seeking to invalidate this
patent at the United States Patent Office, although it was unclear whether any
such proceeding has yet been initiated.

In
discussing this podcast, Patent Docs is not commenting on the merits of Mr.
Logan's patent or the actions of Personal Audio. For those interested, the asserted patent is
U.S. Patent No. 8,112,504, and according to the ACE Broadcasting complaint,
Personal Audio is asserting at least claim 31 of this patent. Patent Docs is also not taking a position on
the EFF's actions at this time in attempting to invalidate Mr. Logan's
patent. In fact, the patent system allows
EFF and organizations like it to seek reexamination at the Patent Office if
they are able to uncover legitimate invalidating prior art. The problem with the Planet Money podcast is
that at best it was misleading, but at worst it got several crucial patent
concepts wrong. And, considering the
size and make-up of the audience that it reaches, it was unfortunate that this
podcast did do a better job at presenting the positive side of the patent
system. It is no surprise that public
opinion of the patent system appears to be waning.

As
a brief refresher, the ability to, and reasoning for, establishing a patent
system can be traced back to the beginning of this country. The U.S. Constitution, in Article 1, Section
8, Clause 8, says:

[The Congress shall have Power] [t]o promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries.

Also,
as explained on the Patent Office website, "[a] patent is a property right
granted by the Government of the United States of America to an inventor 'to
exclude others from making, using, offering for sale, or selling the invention
throughout the United States or importing the invention into the United States'
for a limited time in exchange for public disclosure of the invention when the
patent is granted." In other words, the inventor gets something
(a limited period of exclusivity), but the public gets something also,
disclosure of the invention. Without the
patent system, innovators would be incentivized to keep any new invention as a
trade secret, thereby depriving the public of the ability to learn and improve
upon the invention. Unfortunately, most
accusations that the patent system stifles innovation are based on
extrapolations of individual anecdotes and are often unsupported by any data.

The
first misconception perpetuated by the Planet Money podcast was that the patent
system should only reward inventors if they create a new "thing." For example, Mr. Smith lamented that "patents
stopped being about protecting your gizmo from someone else's gizmo and making
money off of this protected space." First of all, this completely ignores all of the valuable patents that
have been granted for methods of using a "gizmo," or methods of
making a "gizmo." But, more
importantly, the implication was that if the patent holder did not make the "gizmo"
himself, society has not benefited. This
is not the case. In order to ensure that
the invention is disclosed to the public, the patent must teach those skilled
in the art how to make and use the invention (see 35 U.S.C. § 112). For this public disclosure to occur, it is
irrelevant whether the inventor ever actually made the invention. In fact, the Patent Office stopped requiring
the submission of models in 1880. Ms.
Chace was on the right track when she asked Mr. Baker, Personal Audio's
licensing attorney, whether "[i]f you have the idea of the thing, don't
you have to invent the way to get it?" Of course the answer is yes, but Mr. Baker didn't directly answer the question,
but instead stated that the '504 patent provides a roadmap to how to do
podcasting. Interestingly, Ms. Chace
followed up with the question: "Do you think that the guy that invented
iTunes, like, read your roadmap?" Of course, the answer is that it does not matter, but anyone listening
to the question would come away with the impression that iTunes developer did
not, in fact, read the patent. Now, we
do not know either way, but what if they did? Would that matter? If so, it can easily be imagined that the
script would flip, and Apple would then be the bad guy for stealing someone
else's invention and without providing them any compensation. But this perspective was not provided.

Another
issue that was at least misleading in the podcast was the suggestion that
podcasters are the "end users" of the technology. The podcasters are not the typical end users
that come to mind. Instead, most people
would consider the term "end user" to refer to anyone that has ever
listened to a podcast. The only reason
that this use of the term might make sense here is that claim 13 of the '504
patent covers an "[a]pparatus for acquiring and reproducing media files
representing episodes in a series of episodes as said episodes become
available." And even though it is
incredibly unlikely that podcasters like Mr. Carolla are infringing the patent because
they have made such an apparatus, they are still using such an apparatus
(whether it is covered by the asserted claim or not). Again, without taking any position on the
merits of the case, we find it difficult to believe that ACE broadcasting does
not benefit in some way from its podcast offerings. To make the point, Mr. Smith used the example
in the podcast that this case was akin to someone having a patent on the automobile,
but instead of suing rival manufacturers, they sued the owners that bought and
drove the cars. This is not an
appropriate analogy. The more apropos
analogy for this particular scenario would have been to compare the podcasters
to taxi drivers — sure, the taxi drivers do not make the automobiles that this hypothetical patent covers, but the drivers sure do profit from using them. It is likely that the same can be said of
most commercial podcasters.

Probably
the most frustrating thing about this podcast was that the term "patent
troll" was thrown around without ever truly being defined. In fact, Ms. Chace never referred to Personal
Audio as a troll herself, but instead she reported that:

Julie Samuels [of EFF] uses a term for Jim and people like him, she calls
them Patent Trolls. It just means
someone who doesn't build, doesn't make, doesn't create jobs. A patent troll extracts money from people
who do those things.

The
problem is that in this case, Mr. Logan was one of the original inventors on
the patent at issue. Therefore, this was
not a case of a large patent-holding company that buys up other people's
patents in an effort to assert them against others. In fact, perhaps unwittingly, the podcast
painted Mr. Logan as the quintessential small inventor trying to stand-up
against Apple, the large corporation. But, instead of the hero of American ingenuity, he was made to be the
villain. And why? Because he was unsuccessful at developing his
invention that he envisioned all those years ago. Of course, it is easier to paint Mr. Logan in
a negative light now because he is has been targeting podcasters, and that
probably hits a little too close to home for Planet Money. But, we must continue to ask ourselves
whether there is a place in the U.S. patent system for the small inventor, and
if so, what is that place. It is these
inventors that may not have the financial or technical resources to compete
with the larger corporations without the protection of a patent, but they now
risk being labeled a troll for asserting their patent rights, or worse yet,
capitalizing on their invention by selling their patents to non-practicing
entities that might have more leveraging power to help the patents receive full
value. Unfortunately, Mr. Logan might
not be the best example, but the on-going debate should present both sides
fairly in order to allow the public to come to an informed decision.
News from Abroad: UK Court of Appeal Considers Sufficiency

June 11, 2013

The
Court of Appeal recently heard a case relating to Genentech's patent, which
claimed the use of human vascular endothelial growth factor (hVEGF) antagonists
for the treatment of non-cancerous diseases which are characterised by
excessive blood vessel growth (neovascularisation or angiogenesis). Regeneron
and Bayer sought a declaration of non-infringement and revocation of the patent
based on construction, novelty, inventive step, and sufficiency arguments, all
of which were rejected at first instance. Regeneron and Bayer then appealed.

The
main issue discussed in the appeal proceedings was that of sufficiency. The
appellants argued that the patent's scope was too broad as it covered a wide
range of antagonists and diseases. It would therefore impose an undue burden on
the skilled person to identify which diseases can be treated with which
antagonists. The judge held that if it is plausible or credible that the
invention will work over substantially the entire scope of the claims, the
claims can be defined in general terms. This was found to be the case in the
present proceedings due to the common thread of angiogenesis between the
claimed disease states and so the scope of the claims was considered
appropriate. However, if only a few embodiments would work, these must be
claimed specifically. As for evidence to support the claims, it was held that there
is no need to report results of clinical trials, but the evidence must show
that the therapeutic effect is plausible.

Further,
the fact that regulatory approval would be hard to obtain was deemed to be
irrelevant, as it takes into account factors such as side effects, which are
not considered by the patent. The appellants also cited various diseases as not
being treated by the invention. However, it was highlighted that it was only
the angiogenic component that needed to be treated. There was no evidence that
there was no effect on the angiogenic component of the cited diseases, despite other
components not being affected. When discussing the construction of the claim,
the judge found that angiogenesis must contribute to the pathology of the
diseases covered, but need not be the cause of it. This construction also meant
that the skilled person would be able to easily identify the diseases covered
by the claims.

Finally,
it was argued that the patent was insufficient if it extended to the allegedly
infringing molecule (a chimeric molecule demonstrating high affinity and
improved pharmacokinetics), as production of such molecules would require undue
effort and is not described in the patent. However, it was held that the
skilled person would have regarded chimeric molecules as variants falling
within the scope of the claim. It was emphasised that a claim for a broad
invention could cover embodiments that may be invented in the future and which
may have further advantageous properties. The allegedly infringing molecule was
such an embodiment as it encompassed the technical contribution of the claimed
invention by binding VEGF and inhibiting its biological activity, despite
requiring in itself a good deal of ingenuity.

The
appellants also raised novelty and inventiveness objections over a document
that discussed in vivo assays using VEGF
antibodies and disclosed that the VEGF antibodies "may have therapeutic
potential." However, the judge held that the document did not disclose a
therapeutic effect of the antibodies, or clear and unmistakeable directions to
perform the invention. Further, while the prior art suggested that VEGF may
have therapeutic applications, it was disclosed as one of many factors being
investigated. The document also disclosed the antibodies as a research tool and
so gave no reasonable expectation of success of using such antibodies therapeutically.

The
claims were therefore found to be novel and inventive. The appeal was dismissed
and the patent was found to be valid and infringed on all counts.

This
report comes from European Patent Attorneys at WP
Thompson & Co., 55 Drury Lane, London UK. Further details and
commentary can be obtained from Gill Smaggasgale,
a partner at the firm.
Congress Continues Efforts to “Reform” U.S. Patent Law

June 10, 2013

By Donald Zuhn —

It has been less than three
months since the remaining provisions of the Leahy-Smith America Invents Act (AIA)
took effect, and just short of five months since the AIA Technical Corrections
Act was enacted to "correct and improve certain provisions" of that
legislation. Nevertheless, Congress is
once again looking to further reform (or tweak) U.S. patent law, with three
patent-related bills and a discussion draft for a fourth bill having been
introduced or released in the past four weeks.

On May 16, the first of the
three new patent bills was introduced in the House by Rep. Theodore Deutch
(D-FL). The "End Anonymous Patents
Act" (H.R. 2024)
would require the disclosure of ownership and transfers of ownership of patents. In particular, the Act would require:

(1) The entity to which a
patent is issued shall, upon issuance of the patent, file with the USPTO a
disclosure of the patent owner and any real party in interest in the patent.

(2) The owner of a patent
shall, upon payment of the maintenance fee, file with the USPTO a disclosure of
the identity of the patent owner and any real party in interest in the patent.

(3) The entity to which a
patent, application, or interest therein is sold, granted, or conveyed shall,
within 90 days after the date of the sale, grant, or conveyance, file with the USPTO
a disclosure of the sale, grant, or conveyance, and any real party in interest
in the patent, application, or interest.

H.R. 2024 specifies that
the failure to comply with the above requirements will result in the patent
owner or real party in interest being limited to "damages from the date on
which such requirement is met" in any infringement action brought by the
patent owner or real party in interest.
After being introduced, H.R. 2024 was referred to the House Committee on
the Judiciary.

On May 22, Sen. John Cornyn
(R-TX) introduced the "Patent Abuse Reduction Act of 2013" (S. 1013)
in the Senate. S. 1013 would add
procedural requirements for patent infringement suits to Title 35. In addition to requiring a party alleging
infringement to include in its complaint, counterclaim, or cross-claim an
identification of each patent, and each claim of each patent, allegedly
infringed, as well as a specific identification of each accused instrumentality
alleged to infringe the claim, the party alleging infringement would also be
required to provide "a description of the principal business of the party
alleging infringement" and to identify co-owners, assignees, and exclusive
licensees of the asserted patent. S.
1013 would also limit discovery prior to claim construction "to
information necessary for the court to determine the meaning of the terms used
in the patent claim, including any interpretation of those terms used to
support the claim of infringement."
After being introduced, S. 1013 was referred to the Senate Committee on
the Judiciary.

On June 4, Rep. Steve
Chabot (R-OH) introduced the "Promoting Startup Innovation Act" (H.R.
2236)
in the House. The bill, which was
co-sponsored by Rep. Jason Chaffetz (R-UT), Judy Chu (D-CA), Howard Coble
(R-NC), Anna Eshoo (D-CA), Blake Farenthold (R-TX), and Zoe Lofgren (D-CA), would
modify the definition of micro entity in Title 35. In particular, the legislation would:

(A) Increase from 4 to 7
the number of previously filed patent applications (excluding foreign applications,
provisional applications, or international applications for which the basic
national fee under was not paid) on which the applicant as been named as an
inventor.

(B) Increase from 3 times
to 5 times the amount by which an applicant's gross income exceeds the median
household income for the preceding calendar year.

(C) Increase from 3 times
to 5 times the amount by which the gross income of an entity having an
ownership interest in the application exceeds the median household income for
the preceding calendar year.

H.R. 2236 would also
require the Director to approve or deny any application for status as a micro
entity not later than 45 days after the date on which the application is filed. After being introduced, H.R. 2236 was
referred to the House Committee on the Judiciary.

In addition to the three
bills discussed above, Rep. Bob Goodlatte (R-VA), the Chairman of the House
Committee on the Judiciary, announced the release on May 23 of a discussion draft of legislation "designed to address the
ever increasing problem of abusive patent litigation." According to Chairman Goodlatte, the
discussion draft
"helps to address the issues that businesses of all sizes and industries
face from patent troll-type behavior and aims to correct the current
asymmetries surrounding abusive patent litigation" and marks "the
first step in enacting meaningful legislation that reduces the costs of
frivolous litigation, increases patent certainty and promotes the creation of
American jobs." A summary of the
draft legislation can be found here. Patent
Docs will provide more information regarding the bill once the legislation,
or its Senate companion, is introduced.

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

• "USPTO Issues Rules to Implement AIA Technical
Corrections," April 3, 2013
News from Abroad: UK Court Seek Clarification of the Term “Human Embryo”

June 9, 2013

In
Oliver
Brüstle v Greenpeace (Case
34/10) the Court
of Justice of the European Union (CJEU) ruled that any non-fertilised but parthenogenically stimulated
human ovum constitutes a "human embryo" within the meaning of Article
6(2)(c) as it is capable of commencing the process of development of a human
being in the same way as an embryo created by fertilisation of an ovum. Clarification of the scope term "human
embryo" is important as it will determine whether technologies involving stem cells obtained from parthenogenically
stimulated ova, but which cannot develop into a human being, are excluded from
patentability as "human embryos" under the Directive.

The
UK High Court has now referred this question to the CJEU. The referral stems from the UK Intellectual
Patent Office's decision to refuse two patent applications filed by International Stem Cell Corporation (ISCC) relating
to human stem cells. The technology
covered by the patent applications related to unfertilised human ova, subject to division and further development only
by parthenogenesis (a form of asexual reproduction whereby embryos can grow and
develop without fertilisation). The ova produced
by the methods covered by the patent applications only contained pluripotent
cells. These cells undergo division as
would an embryo formed by fertilization, but are incapable of developing into a
human being. The patent
applications were refused by the UKIPO on the grounds that the inventions were
excluded from patentability under paragraph 3(d) of Schedule A2 to the Patents
Act 1977 as covering the use of human embryos.

ISCC argued that
the UKIPO had incorrectly applied the test of "capable of commencing the process of development of a human being"
not only to technologies involving embryos formed by fertilisation but also to technologies
involving parthenogenesis and other processes such as somatic-cell nuclear
transfer in non-fertilised ova. ISCC argued
that the correct application of the test was to exclude only technologies that
enable the commencement of development which leads to a human being and not
those technologies which enable the commencement of a process of development
even if that process is incapable of leading to a human being.

The UKIPO
considered that the test laid down by the CJEU may apply only on the start of a
development process but the exclusion did not necessarily require completion of
the process which results in the birth of a human being in order for the method
to be excluded. However, the UKIPO
submitted that the test developed by the CJEU was unclear and supported the
referral of the question to the CJEU for clarification on the matter.

When considering
the Oliver Brüstle v Greenpeace case, the
evidence before the CJEU was that parthenotes (bundle of cells produced
following parthenogenises of an ova) have the potential to create a human being. This is in contrast to the present case
where it was accepted by all parties that the parthenotes produced by the
methods of the invention were incapable of normal development.

On appeal, the
Judge was persuaded by the view that parthenotes were not the same as
fertilised ova at any stage and that if the process of development was
incapable of leading to a human being, then it should not be excluded from
patentability as a 'human embryo'. The Judge
therefore allowed the referral to the CJEU to seek clarification of the test.

It is
apparent that the ISCC case turns on different facts to the Brustle decision since
the technology covered by the ISCC patent applications produce parthenotes
which cannot develop into a human being. The UK High Court Judge stated that "excluding processes of development
which are incapable of leading to a human being from patentability would not
strike the purported balance sought by the Biotech Directive."

We will report
again when the CJEU's judgement is handed down.

This
report comes from European Patent Attorneys at WP
Thompson & Co., 55 Drury Lane, London UK. Further details and
commentary can be obtained from Gill Smaggasgale,
a partner at the firm.
SIPO and KIPO to Use Cooperative Patent Classification System

June 9, 2013

By Donald Zuhn —

Earlier this year, the U.S.
Patent and Trademark Office and European Patent Office announced the formal
launch of the Cooperative Patent Classification (CPC) system, a global
classification system for patent documents.
The CPC system includes approximately 250,000 classification symbols
based on the International Patent Classification (IPC), which is administered
by the World Intellectual Property Organization (WIPO), and incorporates classification
practices from both the U.S. and European systems. At the formal launch of the CPC system, the
USPTO noted that the system would be used by the USPTO and more than 45 patent
offices.

Last week, the State
Intellectual Property Office of the People's Republic of China (SIPO) and the
Korean Intellectual Property Office (KIPO) announced that each would be using
the CPC system for at least some technical fields. In a release
issued on Tuesday, the EPO and SIPO announced that the two offices had signed a
Memorandum of Understanding to enhance their cooperation in the area of patent
classification. Under the terms of the Memorandum,
SIPO will start classifying patent applications in some selected technical
fields using the CPC beginning in January of 2014. In the interim, the EPO will provide dedicated
training on the CPC system to SIPO. By
January 2016, SIPO aims to classify patent applications in all technical areas
using the CPC. EPO President Benoît
Battistelli noted that "[w]ith the SIPO introducing the CPC as its
internal classification scheme alongside the International Patent
Classification, access to Chinese patent documentation will be dramatically improved." SIPO Commissioner Tian Lipu indicated that
"[c]lassifying Chinese patent documents into the CPC will undoubtedly
improve the search efficiency of these documents by the examiners of various
patent offices worldwide, and help these documents better serve global users as
well."

One day after the EPO and
SIPO announced their Memorandum of Understanding on the CPC, the USPTO and KIPO
announced the launch of a new
pilot program in which KIPO will classify some of its patent documents using
the CPC. Under the pilot program, KIPO
will use the CPC to classify patent applications in technology areas for which
filings have been especially active at KIPO.
KIPO will work with the USPTO to identify these technology areas. Acting USPTO Director Teresa Stanek Rea
stated that "[t]he USPTO looks forward to working with KIPO as it begins
the process of classifying documents into the Cooperative Patent Classification
system." KIPO Commissioner Young-min
Kim noted that "KIPO expects that the pilot project will help improve the
quality of examination at both offices by enabling examiners to retrieve Korean
patent documents more effectively."

For additional information
regarding this topic, please see:

• "USPTO News
Briefs," January 8, 2013
• "USPTO
Takes Next Step Towards Cooperative Patent Classification System,"
June 25, 2012
• "USPTO
and EPO Launch Patent Classification Website," October 26, 2011
• "USPTO
and EPO Agree to Principles of Joint Patent Classification System,"
February 14, 2011
• "USPTO
and EPO to Develop Joint Patent Classification System," October 25,
2010
Conference & CLE Calendar

June 9, 2013

June 9-11, 2013 – IP Business Congress (Intellectual Asset
Management) – Boston, MA

June 11, 2013 – Preventing Chinese Trade Secret
Theft: The Obama Administration's Strategy on Mitigating the Theft of U.S.
Trade Secrets (McDonnell
Boehnen Hulbert & Berghoff LLP) – 10:00 to 11:15 am
(CT)

June 12, 2013 – Post-Grant Patent Proceedings Before the PTAB (Strafford) – 1:00 – 2:30 pm (EDT)

June 12-14, 2013 – Fundamentals of Patent Prosecution
2013: A Boot Camp for Claim Drafting & Amendment Writing (Practising
Law Institute) – New York, NY

June 13, 2013 – Legal Issues of Protection and Enforcement of Biopharmaceutical Patent Rights in Russia (Gorodissky
& Partners) – 12:15 to 1:15 pm (EST)

July 15-16, 2013 – Global Patenting Strategy and Practice (American Conference
Institute) – New
York, NY

July 15-19, 2013 – Patent Law Summer
Intensive (Benjamin N. Cardozo School of Law) – New York, NY

June 25, 2013 – AIA Impact on Section 103 and Non-Obviousness:
Navigating Timing Changes, Post-AIA Treatment of KSR, and Secondary Considerations to Meet Patent Validity
Requirements (Strafford) – 1:00 – 2:30 pm (EDT)

June 25-26, 2013 – Maximising
Pharma Patents (C5 (UK)) – London, England

July 10, 2013 – CLS Bank v. Alice Corp.: Navigating Patent
Eligibility of Software-Related Inventions Absent Clear Guidance (Strafford) – 1:00 to 2:30 pm (EDT)

July
10-12, 2013 – Fundamentals of Patent Prosecution
2013: A Boot Camp for Claim Drafting & Amendment Writing (Practising
Law Institute) – San Francisco, CA

July 11, 2013 – Biotechnology Patents at the U.S. Supreme
Court: 2012-2013 Term (McDonnell
Boehnen Hulbert & Berghoff LLP) – 10:00 to 11:15 am
(CT)

July 31 to August 2, 2013 – Advanced Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

August 5-7, 2013 – Advanced Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

***Patent Docs is a media partner of this conference or CLE
Webinar on Biotechnology Patents at the U.S. Supreme Court

June 7, 2013

McDonnell
Boehnen Hulbert & Berghoff LLP will be offering a live webinar on "Biotechnology Patents at the U.S. Supreme
Court: 2012-2013 Term" on July 11, 2013 from 10:00 am to 11:15 am
(CT). Patent Docs co-author and MBHB attorney Dr. Kevin Noonan will
discuss the outcome of three cases that have been or will be decided by the
U.S. Supreme Court this year:

•
Bowman v. Monsanto, a case involving the application of the
patent exhaustion doctrine to recombinant soybeans

•
FTC v. Watson, involving the FTC's allegations that
"reverse payment" settlement agreements between branded and generic
drug companies in ANDA litigation are anticompetitive and violate antitrust law

•
Association for Molecular Pathology v. Myriad Genetics, Inc., addressing
the question "Are human genes patentable?"

Dr.
Noonan will discuss these cases and their effects on the biotechnology
industry, particularly in view of recent trends at the Supreme Court regarding
the scope of patenting, as well as discuss the Supreme Court's decision in Mayo
Collaborative Services v. Prometheus Laboratories, Inc. from last
term, which reintroduced patent law concepts that have been dormant for half a
century.

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,
Georgia, Illinois, North Carolina, New Jersey, New York and Virginia.
Webinar on Biopharmaceutical Patenting in Russia

June 7, 2013

Gorodissky
& Partners will be offering a webinar entitled "Legal issues of
protection and enforcement of biopharmaceutical patent rights in Russia" from
12:15 to 1:15 pm (EST) on June 13, 2013. Dmitry Klimenko, PhD., and Evgeny Alexandrov,
PhD. will highlight selected aspects of getting patent protection for
biopharmaceutical inventions in Russia via the Russian PTO & Eurasian PO,
and in particular, matters that are treated differently by the EPO, USPTO, or
JPO, as well as enforcement of patent rights specifically in the pharma field. Among the topics to be covered during the
webinar are the following:

•
Patentable and non-patentable biopharmaceutical inventions
•
General info on drafting claims
•
Allowable claim formats
•
Drafting claims for popular biopharmaceutical subject-matter
•
Examples of granted biopharmaceutical claims
•
Approach to evaluating "industrial applicability"
•
Ways of widening scope of protection
•
Patent term extension
•
Medicaments: data exclusivity protection
•
Conditions for patent infringement
•
Sufficiency and validity of evidence of infringement
•
Availability of preliminary/interim injunctions
•
Recent court cases in pharma field

While
the webinar is free, attendees must register in advance. Those wishing to register can do so by
clicking on the register buttons on the webinar announcement.

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