Tag Archives: Myriad

Guidance After The Myriad Decision.

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USPTO Provides Guidance in Response to Myriad Decision

The U.S. Supreme Court recently issued its decision in Association for Molecular Pathology v. Myriad Genetics, Inc., which clarifies what types of DNA claims are patent eligible. Only a few days later, the U.S. Patent and Trademark Office (USPTO) issued preliminary guidance to its patent examining corps.

Earlier this year, tThe Supreme Court held that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.

As noted by the USPTO, “Myriad significantly changes the Office’s examination policy regarding nucleic acid-related technology.”In accordance with the Myriad decision, the USPTO advises it examiners:

As of today, naturally occurring nucleic acids are not patent eligible merely because they have been isolated. Examiners should now reject product claims drawn solely to naturally occurring nucleic acids or fragments thereof, whether isolated or not, as being ineligible subject matter under 35 U.S.C. § 101. Claims clearly limited to non-naturally-occurring nucleic acids, such as a cDNA or a nucleic acid in which the order of the naturally­occurring nucleotides has been altered (e.g., a man-made variant sequence), remain eligible.

The USPTO further added that it is closely reviewing the decision in Myriad and will issue more comprehensive guidance on patent subject matter eligibility determinations, including the role isolation plays in those determinations.

I will keep you informed of any new examination process and rule changes from the USPTO as they become relevant to you business.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Mid-Year Recap of the Top IP Cases to Watch for 2013

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Overall, 2013 is shaping up to be a big year in intellectual property law. There are several key cases to watch in the areas of trademark, copyright, and patent law.

Association for Molecular Pathology v. Myriad Genetics, Inc.: The U.S. Supreme Court has agreed to delve back into the scope of patentable subject matter, as it applies to medical genetics. The primary question before the Supreme Court is whether isolated genes are “products of nature” that are ineligible for patent protection or products of human intervention and ingenuity.

The result is: genes are a product of nature and cannot be patented.

Kirtsaeng v. John Wiley & Sons: This copyright infringement case was argued before the U.S. Supreme Court in 2012, but a decision will be issued in 2013. The lawsuit addresses the tension between the first-sale doctrine and the Copyright Act’s ban against importing a work without the authority of the copyright owner. While the case involves foreign textbooks made and legally acquired abroad and then imported into the United States, the Supreme Court’s decision is expected to impact the larger, million-dollar “gray market” for goods, upon which companies like Costco and eBay rely.

The result: in a 6-3 decision, the Court held that the first-sale doctrine applies to copies of copyrighted works lawfully made abroad.

American Broadcasting Cos. v. Aereo: New technology will continue to test the limits of the Copyright Act in 2013. The Second Circuit is poised to decide whether start-up company, Aereo, has infringed the copyrights of networks, including ABC and Fox Television, by taking broadcast television signals and retransmitting them over the Internet to its subscribers. Because the decision could shake up how consumers get their television, the media and technology industries are closely watching the case.

Currently:  Aereo 2, ABC 0, waiting for the Court to decide.

Apple v. Samsung: The ongoing litigation between Apple and Samsung is just one example of the so-called “software patent wars” that dominated 2012. With lawsuits still pending in California and across the globe, the two tech giants will likely continue to dominate legal headlines.

Currently: Bickering back and forth enough to annoy the judge in the case.  Likely not to go to trial this year.  Samsung has asked for a new trial due to problems with the original trial which could make cell phones obsolete before these two get a verdict.

In addition to these cases, there are a number of regulatory changes in the works, most notably the official conversion to a first-to-file patent system under the America Invents Act.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman