Agris & von Natzmer IP Blog

AMP v Myriad Genetics

Sun, 16 Jun 2013 00:00:00 GMT

The Supreme Court in Association for Molecular Pathology v. Myriad Genetics has held that "isolated" nucleic acid sequences are not patentable but that synthetic nucleic acid sequences (e.g. cDNAs) are patentable. Further, it appears that claims to vectors, kits and synthetic primers are patentable. The USPTO has already issued guidance to examiners as to how to address claims to isolated nucleic acids (see attached link) http://www.uspto.gov/patents/law/exam/myriad_20130613.pdf. Briefly, the USPTO has stated

"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 occuning nucleic acids or fragments thereof, whether isolated or not, as being ineligible bsubject 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 occuring 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."

After Final Consideration Pilot

Wed, 23 May 2012 00:00:00 GMT

The After Final Consideration Pilot (AFCP) applies to "after final amendments" filed prior or on June 16, 2012. The AFCP authorizes Examiners to spend more time then usual on so called "after final amendments" (3 hours) that are filed after a Final Office Action issued. The idea behind the pilot is to test whether giving Examiners somewhat more time to review after final amendments will lead to a higher number of allowances. In view of the recent drop in preference given to the examination of "requests for continued examination" (RCE) which are generally filed to get amendments after final entered and considered, this pilot is attractive for at least two reasons: Not only will the RCE fees be saved, but on top of it, the time to prosecute the case could be cut significantly. Hopefully, the pilot will be a success and will be extended beyond June 16, 2012.

6/21/12: THE AFCP HAS BEEN EXTENDED UNTIL SEPTEMBER 30, 2012.

Senate Passes House Version of "America Invents Act"

Fri, 09 Sep 2011 00:00:00 GMT

The Senate has passed the House version of the America Invents Act of 2011 (H.R. 1249) without amendment. The president has indicated that he will sign the bill. This bill curtails the 1 year grace period to the inventor(s) own disclosures. Further, the US will become a "first to file" country as opposed to "first to invent". Interferences would be eliminated. The new law would allow for "derivation" proceedings to occur when the first-filer “derived” their claimed invention from another.