Intelectual Property Owners Association

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IPO Daily News™

Friday, August 1, 2014

IPO SAYS USPTO GUIDELINES PUSH PATENT-INELIGIBILTY FOR PHARMA, BIOTECH AND PERSONALIZED MEDICINE INDUSTRIES BEYOND NARROW SUPREME COURT HOLDINGS

IPO SAYS USPTO GUIDELINES PUSH PATENT-INELIGIBILTY FOR PHARMA, BIOTECH AND PERSONALIZED MEDICINE INDUSTRIES BEYOND NARROW SUPREME COURT HOLDINGS

Yesterday IPO submitted detailed comments on the USPTO’s March 4, 2014 memo to patent examiners titled “Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, & Natural Products.” IPO said the memo imposes requirements for patent-eligible subject matter that exceed the narrow holdings in Mayo and Myriad, the U.S. Supreme Court cases on which the requirements are based. The “markedly different” criteria and associated factors in the USPTO memo need to be eliminated. IPO also stated that claims needed to be analyzed as a whole, including the interrelationship of all limitations, when evaluating patent eligibility. IPO stressed that not only the structure of a composition, but also its function, should be considered. The IPO comments said the USPTO memo “raises serious questions as to whether key aspects of the innovative products and processes from the [pharmaceutical, biotechnology, and personalized medicine] industries are even patent eligible.” IPO’s comments were approved by the 50-member Board of Directors. Members of IPO’s Pharmaceutical and Biotechnology Issues, U.S. Patent Law, and U.S. Patent Office Practice Committees assisted with the comments. DAVID GASS (McDonnell Boehnen) and GRANT DRUTCHAS (McDonnell Boehnen) helped lead the subcommittee.

IPO SAYS USPTO PRELIMINARY INSTRUCTIONS ON PATENT-ELIGIBILITY FOR INVENTIONS DIRECTED TO ABSTRACT IDEAS SHOULD BE MORE PRECISE

Yesterday IPO submitted comments on the USPTO’s June 25, 2014 preliminary examination instructions in view of the U.S. Supreme Court decision in Alice Corp. v. CLS Bank Int’l. IPO is concerned that the preliminary instructions are overbroad and not limited to the precise and narrow holding in Alice Corp. IPO said that under the instructions subject matter eligibility rejections might be conflated with evaluations of novelty and non-obviousness. Subject matter rejections under the proposed two-part test need to be supported with reasoned logic rather than conclusory statements, IPO stressed.

IPO suggested that the Office should develop and implement “indicia of abstractness,” provide additional examples to illustrate the two-part test, and offer future opportunities for public feedback on the final instructions. The IPO letter expressed tentative viewpoints and was not reviewed by the IPO Board of Directors due to the short-time period for response. Members of IPO’s U.S. Patent Office Practice and Software and Business Methods committees assisted with the comments. SEAN SULLIVAN (Cantor Colburn) and GARY GANZI (Evoqua Water Technologies) helped lead the subcommittee.

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MEET THE COMMITTEE LEADERS: ALAN HERDA

ALAN HERDA is a vice-chair of the IPO Industrial Designs Committee. He is currently a partner at Haynes and Boone, LLP. He focuses his practice on patent and design law. Before practicing law, he worked as a mechanical development engineer at Motorola, designing and analyzing mechanical and thermal systems for cellular base transceiver stations. To join the Industrial Designs or another one of IPO’s 29 Standing IP Committees, click here.

IP IN THE MASS MEDIA

Study Says Patent Examiners Under Time Crunch

Yesterday a Washington Post blog reported on a study by the National Bureau of Economic Research that found pressures to complete work quickly may lead to the granting of more “bad patents.” Researchers reported that less time given to review applications leads to less prior art cited and a heightened likelihood of granting patents.

Automakers Sued Over Music Ripping Features

Yesterday a Forbes blog reported that the Alliance of Artists and Recording Companies (AARC) is suing Ford, GM and other automakers over a “Jukebox” feature that can store the contents of a music CD on a vehicle hard drive. AARC claims the technology violates the Audio Home Recording Act of 1992.

F. CHAU & ASSOCIATES JOINS IPO

F. Chau & Associates of Woodbury, N.Y. (primary contact FRANK CHAU) has become a law firm member of IPO.

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IPO DAILY NEWS FEATURES FEDERAL CIRCUIT SUMMARIES

The newsletter is perhaps best known for its Federal Circuit Summaries, which are precise, one-paragraph, plain English reports on all precedential patent and trademark opinions of the U.S. Court of Appeals for the Federal Circuit. The court issues more than 100 such precedential opinions a year. Summaries are published the next business day after an opinion issues. You can search the text of summaries since 1996 by clicking here and entering your IPO username (usually your e-mail address) and password. Search results are listed in order of date or relevance.

SHANGHAI PATENT & TRADEMARK LAW OFFICE, LLC TO SPONSOR ANNUAL MEETING

The Meeting Notepad at the IPO Sept. 7 to 9, 2014 Annual Meeting in Vancouver, Canada will be sponsored by Shanghai Patent & Trademark Law Office, LLC. For more information and to register, visit www.ipo.org/AM2014.

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Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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