Tagged: Patent Prosecution
In recent years, families and friends of terminally ill patients have launched highly visible social media campaigns to secure access to potentially life-saving medicine, before those experimental drugs are approved. Pharmaceutical companies that are developing these investigational medicines often face difficult ethical and business relations dilemmas: there are limited exceptions for non-approved drug dissemination and the costs and consequences attendant on the exceptions can make either choice unpalatable. Companies and caregivers alike have struggled with how to fairly provide access to experimental drugs without negatively impacting long term drug development or approval.
On April 29, 2015, Senators Grassley, Leahy, Corny, Schumer, Lee, Hatch, and Klobuchar introduced another patent reform bill known as the Protecting Talent and Entrepreneurship Act of 2015 (“PATENT Act”). This bill includes many provisions similar to the previously introduced Innovation Act of 2015, but takes a slightly different approach on some key issues.
Last week, the House Energy and Commerce Committee approved yet another patent reform bill to curtail misleading and frivolous demand letters sent by patent assertion entities (also known as “patent trolls”). The legislation, approved by a vote of 30 to 20, is known as the Targeting Rogue and Opaque Letters Act, or TROL Act (H.R. 2045). This bill aims to protect businesses from frivolous demands while preserving the ability of patent holders to legitimately protect their intellectual property. The overall goal is to curtail “certain bad faith communications in connection with the assertion of a United States patent [that] are unfair or deceptive acts or practices, and for other purposes.”
Recently, Senators Chris Coons, Dick Durbin, and Mazie Hirono introduced an alternative patent reform legislation to the Innovation Act of 2015. This bill, known as the as Support Technology and Research for Our Nations Grown Patents Act (“STRONG Patents Act”), aims to strengthen the rights of patent holders. According to Sen. Coons, “[t]he STRONG Patents Act includes targeted thoughtful reforms to combat abuse where it’s prevalent while ensuring our rich innovation ecosystem remains vibrant.” The goal is to “move past the false premise that the only way to deter ‘patent troll’ abuses is to enact sweeping reforms that weaken patent protections for everyone . . . . and [instead we aim] to narrowly target and deter abusive troll behavior while preserving the ability of legitimate patent holders to protect their innovation,” said Senator Durbin.
Recently, House Judiciary Committee Chairman Robert Goodlatte reintroduced a patent reform bill, known as the Innovation Act of 2015 (H.R. 9) (“The Act”). This reintroduced bipartisan bill is substantially similar to its predecessor, Innovation Act of 2013. The Innovation Act of 2013 had received overwhelming support by the House of Representatives, but was ultimately tabled, along with other patent reform bills, due to bipartisan disputes.
The Federal Circuit Court of Appeals recently held that a third party may not challenge a decision by the United States Patent and Trademark Office (“PTO”) to revive an application under the Patent Cooperation Treaty and enabling statutes (“PCT”) through the Administrative Procedures Act (“APA”). See Excela Pharma Sciences, LLC v. Lee, No. 13-1206 (Fed. Cir. Mar. 26, 2015). In combination with the Federal Circuit’s prior holding in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), this holding puts such decisions beyond the reach of third parties, whether affirmatively attacked under the APA or defensively raised in a later infringement action.
On April 1, 2015, The Federal Circuit dismissed JPMorgan Chase & Co.’s (“JPMC”) interlocutory appeal of a district court ruling denying a motion to stay pending a covered business method review (“CBMR”). Addressing an issue of first impression, the Court concluded that it lacked jurisdiction under §18(b)(2) of the America Invents Act (“AIA”) to review the district court’s order because JPMC moved for a stay while JPMC’s CBM petition was under review by the USPTO Director and a CBM proceeding had yet to be instituted. In Intellectual Ventures v. JPMorgan Chase & Co., Intellectual Ventures (“IV”) sued JPMC alleging infringement of five patents. JPMC responded by filing a motion to stay pending the results of four CBMR petitions that it was planning to file. Immediately after, JPMC filed two CBM petitions covering only two of the asserted patents.
The Federal Circuit recently addressed the issue of whether Patent Term Adjustment (“PTA”) can be reduced under 35 U.S.C. § 154(b)(1)(C) by conduct that does not actually cause delay in the conclusion of prosecution. Section 154(b)(1)(C) provides that PTA “shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” The USPTO has interpreted the statute to mean that conduct that did delay or that could potentially delay the examination of a patent applications should be sanctioned. In Gilead Sciences Inc. v. Lee, Gilead Sciences, Inc. (“Gilead”) contested the USPTO’s interpretation and argued that the statue required actual delay in the conclusion of prosecution. The Federal Circuit held that Congress’s intent in enacting the statute was “to sanction not only applicant conduct or behavior that result in actual delay, but also those having the potential to result in delay irrespective of whether such delay actually occurred.”
We previously reported on the United States Patent and Trademark Office’s issuance of new interim examination guidance in December for evaluating subject matter eligibility under 35 U.S.C. § 101. At the time, the USPTO included examples of allowable claims for nature-based products in light of previous Supreme Court rulings in Mayo and Myriad. On Tuesday, January 27, the USPTO followed up by releasing claim examples relating to abstract ideas in response to the Supreme Court’s decision earlier this year in Alice.
On December 16, the United States Patent and Trademark Office issued new interim examination guidance for evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance, entitled the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Interim Guidance”), was developed in view of the recent Supreme Court decisions in Alice, Myriad, and Mayo. The Interim Guidance supplements the June 25, 2014 Preliminary Examination Instructions that we previously discussed, and supercedes the March 4, 2014 Guidance following Myriad and Mayo.
