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IP Bulletin, July 2013

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07.15.2013 | Legal Update

The Nutter IP Bulletin provides periodic IP news updates and practical tips

Myriad’s Effect On Drafting “Gene Patents”

In a highly anticipated decision issued on June 13, 2013 in Ass’n for Molecular Pathology v. Myriad, the U.S. Supreme Court unanimously ruled that isolated DNA sequences are not eligible for patent protection. The Court simultaneously held that cDNA can be patent eligible subject matter – as long as it is distinguishable from natural DNA. The Court’s holding affects composition claims for patent owners and applicants, but both patent owners and applicants can take various actions to best protect their interests in view of Myriad.

For practical tips in view of Myriad, click here.

Supreme Court Precedent on IP Law Since Justices Sotomayor and Kagan Joined the Court

When Justices Sonia Sotomayor and Elena Kagan joined the U.S. Supreme Court in 2009 and 2010, respectively, relatively little was known about their positions on intellectual property (“IP”) law. Nutter’s IP Bulletin provided IP records for both Justices prior to their Court appointments in November 2009 (Sotomayor) and September 2010 (Kagan). In the past few years, both Justices have taken part in several decisions involving IP law. Their decisions have generally broadened patent rights post issuance, but the Justices have hesitated to extend patent rights too broadly.

For further analysis, click here.

Construing a “Processor” as a Means-Plus-Function Claim Element

In March 2013, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) issued three informative opinions in Ex parte Erol, Ex parte Lakkala, and Ex parte Smith. In each opinion, the same PTAB panel of five administrative patent judges construed a “processor” as a means-plus-function claim limitation despite both the presumption against such an interpretation when the term “means” is not explicitly used and the U.S. Patent and Trademark Office’s historical treatment of “processor” claims. The Board’s designation of these opinions as “informative” sends a signal regarding the Board’s intent to provide guidance on how “processor” claims will be interpreted by the U.S. Patent and Trademark Office going forward.

For practical tips in drafting and interpreting "processor" claims, click here.

New Generic Top-Level Domains Are Coming — Consider Protecting Your Mark Using the Trademark Clearinghouse Now

In early July 2013, the International Corporation for Assigned Names and Numbers (ICANN) passed one of the last checkpoints on the path to introducing new generic Top-Level Domains (gTLD) by promulgating a registry agreement that will be entered into by successful gTLD applicants prior to delegation of the new domain space. This means that ICANN could delegate the first of the approved gTLDs (of which there are over 1000!) very soon, consistent with its earlier estimation that the first of the new domains would be operational by the end of July 2013. Applicants interested in registering their marks in any of the new gTLDs, or those concerned about defending against cyber-squatting or other misappropriation of their marks, should consider submitting their marks to the recently created Trademark Clearinghouse as soon as possible. The Trademark Clearinghouse can provide two key benefits to participating trademark holders: (1) the opportunity to register their marks in a new gTLD before registration is opened to the public, and (2) a notification service if a third party registers an infringing domain in the new gTLD.

For a further discussion of the Trademark Clearinghouse, click here.

Supreme Court Bolsters Patent Owner Rights in Self-Replicating Technologies

In Bowman v. Monsanto Co., the U.S. Supreme Court unanimously held that the doctrine of patent exhaustion does not permit purchasers of certain types of patented, self-replicating articles to replicate the patented articles without the patent owner’s permission. The Court explained that Monsanto’s sale of first generation soybeans to Bowman did not “exhaust” Monsanto’s rights in future generations of soybeans and that, therefore, Bowman had no right to plant and harvest subsequent generations without Monsanto’s permission. Although the holding only applies to particular types of self-replicating technologies, it sets forth broad policy concerns that could guide future decisions, and it highlights the importance of licensing agreements for certain types of self-replicating technologies.

For a discussion of licensing agreements for self-replicating technologies in view of Monsanto, click here.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. Assistance in the preparation of this issue was provided by Derek P. Roller. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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