New Patent Eligibility Guidelines Require Evidence of Routine, Conventional, or Well-Known Knowledge

The U.S. Patent and Trademark Office recently issued new guidelines to determine patent eligibility.  For years after Alice,[i] Mayo,[ii] and Myriad,[iii] software and biotechnology patent applicants have had difficulty patenting many inventions, particularly in the trending “personalized medicine” field where patient genetics and proteomics are considered when selecting treatment regimens. Read More

Updates in Patent-Eligible Subject Matter

The Federal Circuit recently issued a much needed development in patentability case law, in Vanda Pharma. Inc. v. West-Ward Pharma. Int’l Ltd.[i]  Beginning in 2012, the U.S. Supreme Court upended years of patent law regarding patentable subject matter in biotechnology, relying on earlier case law stating natural laws and natural phenomena were not patent eligible subject matter.[ii]  These decisions included a commentary about elements of the patented work that was, in the Court’s opinion, well-understood, routine, conventional activity previously engaged in by researchers in the field, thereby adding an element of obviousness and anticipation analysis to the patent-eligibility inquiry.[iii]  A test issued by the Supreme Court, and further clarified by the Federal Circuit, provide that where a claim recites a natural law, the elements of the claim must be considered to determine if the claim as a whole is directed to an application of the recited law.  However, since these decisions, significant questions still plague patent examiners, attorneys, and courts regarding the requirements to meet patent eligibility. Most notably, to what constitutes sufficient material to distinguish a claim directed to a natural law versus an application of that law.  Since 2014, the U.S. Patent and Trademark Office released at least one new guideline each year to the patent examining corps providing amended instruction on determining patent eligibility.[iv] Read More

The Importance of Using the Correct Legal Language to Transfer IP Rights

Most individuals have at one point or another signed an employment agreement or outside contractor agreement with respect to his or her employment.  For employees, it commonly is a formality needed for a job. For employers, it is a means of obtaining an employment period, establishing or delineating work policies, and acquiring rights to intellectual property.  However, on the last point, employers must be keenly aware of the language that is used to acquire IP rights, and which rights the employer is interested in acquiring, as Advanced Video discovered.  Read More

Pharmaceutical Patents

Aprecia Pharmaceuticals LLC has been marketing the drug levetiracetam under the name Spirtam®, as an anti-seizure.  What caught my attention was the carrier for the drug, which was printed using an additive manufacturing technique, also known as 3D printing.  This technology has been widely publicized over the last few years, and used to make automotive parts, aerospace parts, firearms, and medical devices, among other products.  Aprecia Pharma’s patented use of 3D printing for pharmaceutical compositions is a first,[1] and allows xenobiotics (drugs) to be made in highly porous matrix that dissolves in the mouth within a mean time of 11 seconds.[2] Read More

Considerations for Patenting an Invention

Many people start the patenting process after having developed an idea into an invention.  However, once the invention is formed, there are many more items to consider, which depend on the inventor’s goals for the invention, such as bringing the invention to market by himself or herself, seeking out investors to bring an invention to market, or seeking someone else to “purchase” the technology.  Ultimately, a patent defines an area of protection, where the owner of a patent can prevent others from making, selling, importing, and offering to sell the invention in the country where the invention is patented. Read More