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Update on natural products doctrine in the wake of Myriad

In our previous note, we had taken a rather optimistic view of the post-Myriad patentability of patents directed towards purified non-genomic DNA biological products, such as, for example, stem cells, peptides, antibodies, industrial enzymes, vaccines and diagnostic assays, among others.   We had hoped that the courts and the USPTO would not extend the Myriad ruling […]

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Patentable claim types after Myriad

By David Mellman, Ph.D and Mary Breen Smith Note: please see update (published June 4, 2014) with regards to this issue. In June 2013, the U.S. Supreme Court held in Association for Molecular Pathology vs.  Myriad Genetics, Inc., No. 12-398 (569 U.S. ___ June 13, 2013) that isolated genomic DNA sequences that are identical to […]

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The European Patent Office Changes the Rules for Filing Divisional Applications

In 2010, the European Patent Office (EPO) amended Rule 36 of the European Patent Convention to mandate that divisional applications could only be filed within two years after the first communication from the Examining Division of the EPO. After this two-year window, it was no longer possible to file divisional applications, except in extraordinary circumstances. […]

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What makes a diagnostics-type claim patentable after Prometheus?

“Personalized medicine” is of increasing importance in the medical field today.  Personalized medicine, broadly speaking, refers to the design of medical treatments for the individual characteristics of each patient.  As of March 2013, there were approximately 119 drugs approved by the U.S. Food and Drug Administration (FDA) with pharmacogenomics markers in their labels.  Scientific research […]

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Procedures available at the USPTO for challenging issued patents

By Sarah Cassinis Third Party Challenges: The American Invents Act (“AIA”) has provided certain provisions for third parties to challenge issued patents at the United States Patent and Trademark Office (“USPTO”), as an alternative to litigating patent validity in federal district court.  These alternatives to litigation include post grant review and inter partes review. Ex parte […]

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Myriad Genetics Supreme Court decision, June 13, 2013

Assoc. for Molecular Path. et al. v. Myriad Genetics, Inc., No. 12-398 (U.S., June 13, 2013). The Supreme Court decided today that “[a] naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated” under 35 U.S.C. Section 101.  Therefore, naturally occurring DNA sequences containing both intron and […]

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How Far Does the Monopoly Conferred by a Patent Extend?

By: Tony Sanny, Ph.D In the recent U.S. Supreme Court decision, Bowman v. Monsanto Co., U.S., No. 11-796, 5/13/2013, the Court held that the patent monopoly does extend to later generations of self-replicating seeds.  Yet, the Bowman decision left open important questions regarding how far the monopoly rights conferred by a patent extend.  The Court […]

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