Audio conference to be held October 3, 2013 Section 101 of the patent statutes defines the conditions for patent-eligible subject matter. Historically, Section 101 issues have not been predominant in the life sciences. However, two recent Supreme Court cases have challenged those assumptions and clarified what scientific discoveries are eligible for patentability under Section 101. […]

Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter […]

In the on-going saga of the patentability of correlations between blood test results and patient health, Prometheus Laboratories submitted its brief to the U.S. Supreme Court.  The Court granted cert for the second time in Mayo Collaborative Services v. Prometheus Labs., Inc, Supreme Court No. 10-1150, to consider whether to set limits on when inventors […]

The Supreme Court issued GVR Orders* on two important biotech cases: Classen Immunotherapies, Inc. v. Biogen IDEC et al. (08-1509) The petition for a writ of certiorari is granted. The judgment is vacated, and the case is remanded to the United States Court of Appeals for the Federal Circuit for further consideration in light of […]

MEMORANDUM DATE:            June 28, 2010 TO:                  Patent Examining Corps FROM:           Robert W. Bahr, Acting Associate Commissioner For Patent Examination Policy SUBJECT:     Supreme Court Decision in Bilski v. Kappos Today, the Supreme Court affirmed the USPTO’s decision that the claims in the patent application at issue in Bilski v. Kappos are not patent-eligible under 35 U.S.C. […]

The Supreme Court finally heard oral hearings in the Bilski v. Doll case.  Here, the Court was asked to consider whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible […]

The USPTO has issued “Interim Examination Instructions For Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101” to be used by patent examiners during examination. These instructions supersede previous guidance on subject matter eligibility. These instructions  must be “really” important given the extraordinarily “high” number of “unnecessary” quotation marks.  Maybe the USPTO could benefit from […]