Patent Law

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By Pam Bertani

The prospect of obtaining patent protection for inventive business methods has become considerably more likely in light of a recent decision by the United States Board of Patent Appeals and Interferences, and corresponding guidelines subsequently issued by the United States Patent and Trademark Office. In the case of Ex Parte Lundgren, the Board reversed a patent examiner’s rejection of Lundgren’s business method patent claims, which the examiner rejected on the grounds that the claims were not linked to a computer or other electronic device; lacked a technological basis; were therefore outside the “technological arts”; and consequently did not constitute patentable subject matter. (Ex Parte Carl A. Lundgren, Appeal No. 2003-2088 (Bd. Pat. App. & Interf. Sept. 2005.) Within a few weeks after Ex Parte Lundgren was published, the PTO issued Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, which are consistent with Ex Parte Lungren, and confirm that patent examiners are no longer allowed to reject business method claims simply because those claims are not linked to a computer, database, or other electronic device.
Continue Reading Business Method Patents – The Method Stands Alone

By Todd Wilson

Companies that develop and maintain patent portfolios and also participate in standards setting organizations (SSOs) must be aware of a duty to disclose patents and patent applications that relate to the development and publication of industry standards. Each SSO has disclosure policies to ensure that patented technology makes its way into industry standards in order to advance the state of the technology. Patent holders that participate in the development of the technology standards must understand the individual policies of the particular SSO in making a determination as to whether it must disclose its patent and applications and whether the required disclosure is financially tolerable.
Continue Reading Disclosure Requirements for Patent Holders Who Participate in Standards Setting Organizations

By Pam Bertani

On October 31, 2005 the United States Supreme Court granted a petition for writ of certiorari to hear argument in the case of Metabolite Laboratories, Inc., et al. v. Laboratory Corp. of America, a patent infringement case that will once again test the boundaries of what constitutes patentable subject matter, and one that has already stirred some controversy in the world of jurisprudence. (Metabolite Laboratories, Inc. et al. v. Laboratory Corp. of America Holdings (Fed. Cir. 2004) 370 F.3d 1354; Petition for Writ of Certiorari granted (October 31, 2005) WL 2838583.) In an interesting twist to what already promises to be a closely watched decision, not more than two days after granting certiorari, the High Court vacated its October 31, 2005 Order, having been advised by freshly appointed Chief Justice John Roberts that, after initially participating in the vote on whether to hear the case, the Chief Justice realized he should have recused himself from participation. On November 2, 2005, the Court issued a subsequent Order, again granting the petition, but expressly without the Chief Justice’s participation in the vote to withdraw the October 31, 2005 Order, and without the Chief’s participation in reconsidering the petition. Chief Justice Roberts did not provide a detailed explanation as to why recusal was appropriate, but reportedly acknowledged that he made a mistake in participating in the early stages of the Federal Circuit appeal. Chief Justice Roberts’ former law firm filed the appeal on behalf of defendant Laboratory Corporation of America Holdings (LabCorp), the company that stands accused of infringing Metabolite Laboratories, Inc.’s (Metabolite’s) broadly patented method for detecting vitamin deficiencies in humans.
Continue Reading Testing (Again) The Bounds of Patentable Subject Matter

By Adam Jones

How many of you have ever cleaned out your garage, dusted the cobwebs off of old ski boots, exercise equipment and children’s toys that have been outgrown or forgotten, and put all the stuff that you don’t use anymore in front of your house for a weekend garage sale? Or maybe, when you could really use some extra cash, you decided that you were finally willing to part with your commemorative Star Trek shot glass collection and listed it for sale on ebay, hoping it would trigger a ferocious bidding war between a few obsessed Trekkies around the world. Auctions, whether held online or in your front yard, have long been a great way for buyers and sellers to come together and exchange goods for mutual benefit. If auctions are a great way to sell your old junk, can they work for the sale of less tangible assets like intellectual property?
Continue Reading Looking to Sell Your Patent Portfolio? Put it on Ebay

By Audrey Millemann

In an interesting decision in the biotechnology area, the Court of Appeals for the Federal Circuit recently held that certain nucleic acid sequences had no utility and were not enabled. In re Fisher (Fed. Cir., September 7, 2005).

The owner of the patent at issue is the biotechnology giant, The Monsanto Company. The patent application claimed five purified nucleic acid sequences known as expressed sequence tags (ESTs) that encode certain proteins in maize plants. Although the inventors identified the ESTs, they did not know the function of the genes or the proteins. The application described several uses for the ESTs, including gene mapping in maize, providing primers to use in polymerase chain reaction processes to duplicate genes, determining the presence of polymorphisms, isolating promoters, controlling gene expression, and locating genes in other plants.

The examiner rejected the claim under 35 U.S.C. ��101 on the grounds the ESTs had no specific and substantial utility. The examiner found that the uses described by Monsanto were not specific as they were no different from the uses of any EST, and were not substantial as the proteins encoded by the ESTs had no identifiable function. The examiner also rejected the claim on the grounds that it was not enabled under 35 U.S.C. ��112, first paragraph, finding that the application could not teach how to use the ESTs because they had no specific and substantial utility.
Continue Reading How Useful is Useful