Tag Archives: Patent Guidelines

{3:35 minutes to read} On May 5, 2016, the USPTO published new patent eligibility examples, including two examples related to diagnostic methods (examples 29 and 31). Example 29 is directed to a method for diagnosing and treating Julitis (a hypothetical disease). According to the hypothetical, Julitis is an autoimmune disease causing chronic inflammation of the […]

{1:35 minutes to read} On April 8, 2016, the United States Court of Appeals, Federal Circuit, decided Genetic Technologies Limited v. Merial L.L.C., Bristol-Myers Squibb Company. The issue of this case related to the discovery that, in human DNA, certain coding alleles are always linked with certain non-coding alleles. Thus, searching for the non-coding sequences corresponding […]

{1:40 minutes to read} In evaluating the case Magna Electronics, Inc. v. TRW Automotive Holdings Corp., I pose an important question: Is this the end of the patent term adjustment? What are the facts of the case? The patent at issue (U.S. Patent No. 7,339,149, hereinafter “the ‘149 patent”) was filed November 16, 1999, by […]

{2:15 minutes to read} In Avid Technology, Inc. v. Harmonic, the Federal Circuit found that Harmonic did not infringe on the patent and that the district court—based on a statement made during the prosecution of the underlying patent—had erred in construing a claimed term too narrowly. During prosecution, to distinguish the claimed subject matter over […]

{2:25 minutes to read} The new case Lexmark v. Impression addresses the right to import, reuse, and resell patented articles. Specifically, this case reaffirmed that: A seller can use its patent rights to block both resale and reuse of a product. Authorized sales of a product abroad does not exhaust the US patent rights associated […]

{3:30 minutes to read} In the recently decided case In re Urbanski, the Federal Circuit Court upheld the decision of the United States Patent & Trademark Office’s Trial and Appeal Board, which had found obvious the claims of Urbanski’s patent application. Urbanski had argued unsuccessfully that the cited references taught away from their combination. However, […]

{2:55 minutes to read} When drafting a patent application, it is very important to be mindful of admissions as well as any information in the public domain. In looking at a recent appeal that was decided by a Federal Circuit Court, we learn why this is so important: During the prosecution of U.S. Patent Application […]