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USPTO Guidance on Subject Matter Eligibility

USThe USPTO has issued Interim Guidance on Patent Subject Matter Eligibility for US Examiners determining eligibility under 35 U.S.C. 101 in view of the recent decisions in Alice, Myriad and Mayo. The guidance is interim in nature only and the USPTO expects to update it in response to feedback. Comments may be submitted to the USPTO until 16 March 2015. (more…)

An Overview of Biotech Patenting

MyriadThis is the first in a series of articles about biotech inventions. The articles will explore how Patent Offices deal with biotech inventions and how the demands of biotech research and financing impact on patent strategy.

The present article provides an overview of the issues that are relevant in patenting biotech inventions. (more…)

Alice v CLS Bank – a view from a US perspective

CapitolLast year we noted that the US Supreme Court is to take a crack at the Alice v CLS Bank Intl case (see here). Shortly after that post we reported on a CIPA seminar “Patentable subject matter in the US” in which Seth D. Levy of Nixon Peabody gave a good overview of what’s going on with patent subject matter (35 USC §101) in the US.

Seth has subsequently provided some further thoughts on the Alice v CLS case. If you’re interested in hearing what US practitioners think of the referral, what we can expect next and how the Court might rule then please see Seth’s comments below: (more…)

Top 10 Points from Patent Developments and Case Law in the US in 2013

cipalogoFollowing on from last year’s guest posts from Suleman Ali of Holly IP and K2 about top 10 points from UK Court Decisions and top 10 points from EPO case law in 2013 we now have Suleman’s post regarding developments in the US in 2013. This post was originally posted on the Holly IP blog and is reproduced with the permission of the author.

These points are from a talk held at CIPA on 27 November 2013 given to UK Patent Attorneys. (more…)

Patentable subject matter in the US


On 20th September 2013, as part of a CIPA series of webinars, Seth D. Levy (Nixon Peabody) gave a very clear presentation on the state of play with respect to patentable subject matter cases in the US.

Before we get into the review of the presentation it is worth pointing out that although the focus of the talk was on medical diagnostic claims (“a challenging area these days in the US”), there is uncertainty whether there may be wider implications for the software and business method fields in the US.

As such, and speaking as a “software” patent attorney, the subject matter of this presentation should be of interest to all patent attorneys and other interested individuals regardless of their technical field.

The talk covered the following general areas: background to the current state of case law in the US (essentially the Supreme Court prior to Myriad Genetics); Myriad and its aftermath; USPTO Guidance; and prosecution tips. (more…)

IP – Hit or Miss? Patenting the socks off of your copyright (TM)

Not another newspaper article about IP! (Image from flickr – Brandon Grasley – source link below)

OK, before we begin, please note that this could turn into a mild rant. There, you’ve been warned.

One of the recurring topics on this blog is the series of articles called “IP – Hit or Miss?” which we use to analyse the representation of intellectual property (IP) in films, TV and the media. We’ve generally focussed on film and TV references but recently I’ve noticed a number of articles in the press where the terms “patent”, “trade mark” and “copyright” have been used seemingly interchangeably. Now come on guys, it’s not that hard to get it right? Is it?

Well, maybe it is. So it’s time to name and shame and then educate. In the words of Popeye “That’s all I can stand, I can’t stands no more”.


“US Supreme Court rules that human genes cannot be patented” – A look at the Myriad case


Image by andylepp (via Flickr.com under Creative Commons licence)

“US Supreme Court rules that human genes cannot be patented” is the headline that millions of people around the world will be reading today, after the US Supreme Court issued its decision yesterday (13 June 2013) in the ‘Myriad case’.

However, the headline for the general populace is quite different to the take-home message for those in the biotechnology community and for patent attorneys in particular.  Whilst there is no doubt that some patents exist to human genes (although never in so far as they encompass a natural gene within a human being – a popular misconception in the press), patent attorneys have understood for a long time that patent offices, such as in the US and Europe, have not granted such broad patents for many years – the patentability requirements are simply too tough to obtain broad gene sequence claims in the modern era.  In fact, the results of ‘the human genome sequencing project’, which opened up the possibility for people to easily try to claim human gene sequences has, in fact, made that prospect far harder.  People have never needed to worry that ‘their’ genes might be patented by someone else.

In yesterday’s decision it was held that a naturally occurring DNA sequence is a product of nature and not patent eligible in the US, but a cDNA sequence is patent eligible provided it does not occur naturally.

So what would be a more realistic headline to this latest US decision?  Well, fortunately for all concerned, the headline is probably not so dramatic as that stated above!  We need to take a couple of steps back to understand the outcome of this latest decision.