Pity the life sciences patent prosecutor who tries to find a path through recent appellate court decisions regarding patent eligibility.\u00a0 A recent concurrence in a divided Federal Circuit decision indicated that U.S. Supreme Court decisions like\u00a0Mayo\u00a0<\/i>have left too much uncertainty about what is and is not patent eligible under section 101.\u00a0 Like others in the IP community, the concurrence indicated that perhaps Congress should act.\u00a0 But few experts expect a legislative fix to come quickly.\u00a0 That leaves both patent owners and applicants with a pressing need to assess the impact of recent significant Federal Circuit opinions, such as\u00a0Exergen<\/i>,\u00a0Vanda<\/i>\u00a0and\u00a0Praxair<\/i>.<\/p>\n
Exergen\u00a0<\/i>and\u00a0Vanda<\/i>\u00a0have been the cause for cautious optimism for some life science companies.<\/p>\n
Exergen\u2019s invention, a diagnostic patent, was upheld under section 101 by the Federal Circuit, which was considered an important event post-Mayo<\/i>.\u00a0 This decision is referenced in the USPTO\u2019s\u00a0Berkheimer<\/i>\u00a0memo of 19 April, which takes the agency into the uncharted territory of trying to decide how much and what kind of evidence it takes to show that an invention is not “well understood, routine and conventional.”<\/p>\n
Vanda<\/i>\u00a0affirmed a district court\u2019s finding that claims to a personalized method of treatment are patent eligible.\u00a0 In early June, the USPTO issued a new memo to examiners on\u00a0Vanda<\/i>.\u00a0 The Federal Circuit decision didn\u2019t address a number of relevant issues, however, such as whether a doctor could be a direct infringer through divided infringement.<\/p>\n
The most recent of the three decisions is far more ominous for life science inventions.\u00a0\u00a0Praxair,\u00a0<\/i>a recent appeal of an IPR decision, could result in many section 101 challenges being made in IPRs in the form of a printed matter\/obviousness challenge.<\/p>\n
Our panel includes a life sciences expert at the USPTO, a top patent lawyer at a major pharmaceutical company, and a founding shareholder of an IP law firm who specializes\u00a0in biotech.\u00a0 They will assess the cumulative impact of recent changes and delineate prosecution strategies to address them.<\/p>\n
Speakers:<\/p>\n
Pity the life sciences patent prosecutor who tries to find […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[1],"tags":[],"class_list":["post-23905","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"acf":[],"yoast_head":"\n