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

By Scott Hervey

Canada has made a fundamental change in its Trade-mark Examination practice. It had been a longstanding practice in the Canadian Intellectual Property Office (the governmental body responsible for reregistering trade-marks) of determining the priority of applications based on the earliest of the following: the date of first use or making known in Canada, the date of filing in Canada, or the date of filing of the Paris Convention priority application. The legitimacy of assessing priority in this regard was challenged and overturned by the Federal Court of Appeals in May of this year in Attorney General of Canada v. Effigi (2005 FCA 172). Continue Reading Canada Adopts The First To File System For Trade-marks

By Pamela W. Bertani

As Congress continues to mull over the Patent Act of 2005, and the Act is subjected to ever increasing scrutiny, what some believe are serious flaws in the legislation have surfaced, creating considerable cause for concern. A previously published companion article highlighted various provisions of the proposed legislation, which bill sponsor Congressman Lamar Smith (R., Texas) extolled as being necessary “to bolster the United States economy and improve the quality of living for all Americans” as well as to “create new jobs.” While these objectives are clearly inviting – particularly in light of growing criticisms regarding Patent Office inefficiency, the lack of qualified patent examiners, the poor quality of issued patents, and the corresponding escalation of profoundly expensive patent litigation – some believe that the legislation may result in fixing current patent procedures that are not broken, which will create more chaos than stability in an already stressed system. Two hotly contested provisions in this regard concern the Act’s redefinition of “prior art”, and the provision governing the issuance of injunctions. Continue Reading The Patent Act of 2005 Remains Hotly Contested And Under Intense Scrutiny

By R. Todd Wilson

All businesses have trade secrets. Stated slightly differently, every business has information that it would rather keep confidential. A trade secret can be any useful information that is not generally known. Trade secrets encompass both technical information such as formulas, designs, tools, manufacturing processes, and computer source code as well as business secrets including customer lists, employee lists, financial and accounting data, product plans and marketing plans. Such “confidential” or “proprietary” information is usually essential to the success of the business. Often, however, companies do little or nothing to protect that knowledge. Continue Reading Trade Secrets: Protection Best Practices