IPO PARTICIPATES IN WIPO GENERAL ASSEMBLIES
This week IPO has attended the Sixty-Eighth Series of Meetings of the Assemblies of the Member States of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. IPO Executive Director JESSICA LANDACRE and Senior Director for Global Affairs TOM VALENTE have represented IPO, participating in several meetings and events. These have included the non-governmental organization stakeholder meeting with WIPO Director General DAREN TANG where a range of issues was discussed and where IPO offered a question related to AI and IP. At a meeting with Group B+, IPO presented suggestions for a practical path to substantive harmonization of patent laws and offered remarks on the Draft Agreement on Client-Attorney Privilege. (IPO’s resolution related to the latter issue may be found here.) At a side-event on how the world could benefit from global IP digital solutions, IPO made remarks on why a global assignment is needed from an industry perspective and provided examples of the vast costs associated with the current assignment process. IPO will continue to monitor the General Assemblies as they continue next week.
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** SPECIFICATION DID NOT GIVE SUFFICIENT GUIDANCE TO ENABLE METHOD OF TREATMENT PATENT
Wyeth LLC v. AstraZeneca Pharms. LP, 24-2325 — Yesterday in an opinion by Judge LOURIE, the Federal Circuit affirmed a district court judgment as a matter of law (JMOL) that Wyeth’s patents for a method of treating certain types of small cell lung cancer were invalid for lack of enablement. Wyeth argued AstraZeneca failed to prove that the claims required undue experimentation to determine a non-toxic or non-fatal daily dosage of an EGFR inhibitor.
The Federal Circuit disagreed. The claims required an EGFR inhibitor be administered to a patient daily in a “‘unit dosage’ . . . calculated to produce a therapeutic effect ‘in a patient.’” The specification left the dosage determination “entirely to the knowledge of the skilled artisan,” providing no working examples of unit dosages and only identifying three compounds representing preferred embodiments with in vitro data that was insufficient to enable the claims. The dosage ranges recited in the specification were qualified as “general” and did not explain how the ranges were derived or how they related to specific compounds, with some of the ranges exceeding the maximum dosage of certain compounds. The lack of sufficient guidance in the specification left the dosage determination up to the skilled artisan and “in effect require[d] experimentation.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
GROUP DISCOUNT FOR IPO MEMBERS TO ATTEND IPO’S ANNUAL MEETING
IPO is offering member organizations a group discount to attend IPO’s Annual Meeting. Any IPO member organization sending 5 or more employees to attend the annual meeting will receive a rate of $850 per registrant! Visit the website for additional information.
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COMING SOON ON THE IP CHAT CHANNEL™: BIG CHANGES IN US INTERNATIONAL IP POLICY: THE 2026 USTR SPECIAL 301 REPORT
Join the IP Chat Channel™ on Tuesday, July 21 at 1:00pm ET for a webinar that will provide an overview of significant IP policy concerns across different countries and regions based on IPO’s comments made during the U.S. Trade Representative’s (USTR) Special 301 review and report. STEVE BAUER (Retired), JAKE EWERDT (Qualcomm Inc.), DEAN HARTS (3M Innovative Properties Co.), and SANJEEV MAHANTA (Merck & Co., Inc.) moderated by IPO’s ASTRID ROE, will go around the world in one hour, noting issues that IP practitioners should be aware of and pointing out global trends in IP law and policy.
Since the last report, two countries, Argentina and Mexico, resolved many concerns, and the EU was added to the Watch List. One country, Vietnam, was designated a Priority Foreign Country, a designation that had not been used for many years. The USTR Special 301 Report is a Congressionally mandated annual review of the global state of intellectual property rights protection and enforcement. Each year, USTR invites public participation and comments in the review process assessment. IPO’s International Patent Law & Trade Committee leads IPO’s engagement in this public process and consolidated input from IPO committees and members to prepare IPO’s comment letter. IPO’s comments, among other things, highlight many of the issues and concerns raised within IPO committee discussions throughout the year. For practitioners whose practices cross borders, don’t miss this webinar.
IP Chat Channel™ webinars are free for IPO members. Advance registration is required. CLE offered in most states.
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LANGUAGE PROBLEMS IN PATENT CLAIMS
Readers Defend “Said” ─ I recommended the trend of using “the” instead of “said” to refer back to previously recited claim elements. BOB ARMITAGE wrote that he’s a fan of “said.” It reminds him that he needs an antecedent in the claim and tells courts there’s an antecedent. JEFF INGERMAN also favors “said.” In the past, “the” was reserved for inherent elements, leaving “said” for referring back. Examiners are now making more antecedent-basis rejections.
Recent Claim Troubles ─ In the Federal Circuit’s June 23 opinion in Enanta v. Pfizer, a typo in a chemical formula (C2 instead of C1) led to a holding of invalidity. In the Federal Circuit’s May 4 opinion in Enviro Tech v. Safe Foods, inconsistent use of “about” to define a range in claims that were amended to avoid the prior art led to a holding of invalidity for indefiniteness. I express no view on whether these cases were decided correctly.
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The Curmudgeon