Patent Prosecution. June 2013. June 13, 2013. Overview. Welcome Quick Patent Prosecution Updates General Discussion. Myriad Case. Facts: Myriad Genetics located and developed a test for the BRCA1 & BRCA2 genetic mutations which substantially increase the risk of breast and ovarian cancer
Patent Prosecution June 2013 June 13, 2013
Overview Welcome Quick Patent Prosecution Updates General Discussion
Myriad Case Facts: Myriad Genetics located and developed a test for the BRCA1 & BRCA2 genetic mutations which substantially increase the risk of breast and ovarian cancer Example Composition Claims Claim 1 “[a]n isolated DNA coding for a BRCA1 polypeptide,” which has “the amino acid sequence set forth in SEQ ID NO:2.” = DNA Claim 2 “[t]he isolated DNA of claim 1, wherein said DNA has the nucleotide sequence set forth in SEQ ID NO:1.” SEQ ID NO:1 = cDNA Held: DNA, an even isolated form- not patent eligible under 35 U.S.C. 101 cDNA (Complementary DNA), which includes the same protein-coding information found in the DNA but omits segments that don’t code for proteins- may be patent eligible because it is not naturally occurring.
Myriad Case Notes: No method claims- innovative method of manipulating genes while searching for BRCA gene = patent eligible Claims don’t involve new applications of knowledge Did not consider patent eligibility of DNA in which the nucleotides are altered
Myriad Case JUSTICE SCALIA, concurring in part and concurring in the judgment. I join the judgment of the Court, and all of its opinion except Part I–A and some portions of the rest of the opinion going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief. It suffices for me to affirm, having studied the opinions below and the expert briefs presented here, that the portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature.
Power of Attorney Having Powers of Attorneys kicked back from the USPTO because the Applicant is not designated on the ADS Solution: file ADS naming the Applicant along with Power of Attorney documents
AIA Transition Applications • ADS- AIA Statement • Secretary’s instructed to NOT check this box, unless attorney specifically instructs otherwise. • Attorney’s responsibility to decide.
AIA Transition Applications • How to fix if you accidentally checked the AIA Statement box on the ADS • Submit a corrected ADS with the box unchecked. • Cover letter explaining that checking the box was inadvertent.
Cooperative Patent Classification (CPC) Joint (Global) Classification System Based on the European Classification system (ECLA) More granular than the International Patent Classification (IPC) system Participants EPO USPTO Korean Patent Office (KIPO) China (SIPO)
Cooperative Patent Classification (CPC) Now Implemented in the USPTO (January 1, 2013) 2 Year Transition Newly filed US applications ("A" publications) will be classified in the USPC and the CPC US patent grants ("B" publications) will be classified in either the USPC or the USPC and the CPC CPC symbols will be printed on the front page, next to the IPC and USPC symbols. By January 1, 2015- USPTO will exclusively classify CPC (but will keep IPC)
Cooperative Patent Classification (CPC) A01B33/08 Sections A Classes 01 IPC Subclasses B Groups 33(/00) Subgroups CPC 08
Cooperative Patent Classification (CPC) Sections A: Human Necessities B: Operations and Transport C: Chemistry and Metallurgy D: Textiles E: Fixed Constructions F: Mechanical engineering G: Physics H: Electricity
Cooperative Patent Classification (CPC) Working on implementing CPC for our subject matter conflicts Converting US classes to CPC Searches Need to start using CPC
After Final Consideration Program Pilot 2.0 Avoids the Expense of RCE’s Timing Responses to Final Office Actions Filed From May 19, 2013 to September 30, 2013 Requirements (NO FEE) Request for Consideration Under Pilot (PTO/SB/434) Amendment to at least one independent claim that does not broaden it Willing to participate in an interview
After Final Consideration Program Pilot 2.0 What does the Examiner Get? Up to 3 Hours non-production time 10 day adjustment of docket management clock Outcome Examiner can deny request (file RCE) Allow the application Request interview Need to conduct interview within 10 days Otherwise back to filing RCE
After Final Consideration Program Pilot 2.0 Results- it works Filed Request June 5, 2013 Examiner called yesterday (June 12) requesting a few minor changes for Notice of Allowance Saved client the expense and time of an RCE!
Patent Prosecution June 2013 June 13, 2013