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IP Bulletin, May 2010

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Federal Circuit Vacates Earlier Inequitable Conduct Holding to Hear Appeal En Banc
On April 26, 2010, the Federal Circuit issued an order vacating its three judge panel holding in Therasense, Inc. v. Becton, Dickinson and Co., a case that was discussed in our March issue. In issuing its order vacating the previous appeal, the Federal Circuit presented six issues for the parties to consider when presenting the new briefing; each of the issues relates to inequitable conduct. Members of the patent community have expressed hope that the Federal Circuit will clarify the doctrine of inequitable conduct, and in doing so, help ease the growing burden on applicants that the current rules create with respect to the duty of disclosure. It is anticipated that the en banc appeal will be heard by the Federal Circuit in October or November of this year.

For more information about the issues to be addressed in the en banc appellate review, click here.

High-level Changes at the European Patent Office
This July, Benoît Battistelli will take charge as the next president of the European Patent Office (EPO). Mr. Battistelli comes to the EPO from the French Institute for Industrial Property, where he served as director general for the past six years. He will succeed the current EPO president, Alison Brimelow. U.S. applicants should watch closely. As Ms. Brimelow’s tenure has shown, a new EPO president can mean big changes in prosecuting patents abroad.

For further discussion of the European Patent Office changes, and how they may affect your practice, click here.

Federal Circuit Confirms the Written Description Requirement for Patent Applications
On March 22, 2010, the Federal Circuit handed down an en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. holding that there was a “written description” requirement that is distinct from other requirements of the patent laws. The decision all but assures that the U.S. Patent and Trademark Office (USPTO) will continue its policy of heightened scrutiny for biotechnology patent applications.

For more analysis of this case, and related practical tips, click here.

BPAI Clarifies Standard of Review for Examiner’s Rejections
In its first precedential decision of 2010, the Board of Patent Appeals and Interferences (BPAI) decided in Ex Parte Frye that an Examiner’s rejection is given no deference upon appellate review. Furthermore, the BPAI will not unilaterally review any arguments on a particular issue not specifically presented to the Board by the Appellant. Appellants should thus carefully consider all issues and present thorough arguments in Appeal Briefs to ensure complete BPAI review. Also of note in this case is that USPTO Director Kappos and USPTO Deputy Director Barnes joined the BPAI panel which heard this case. Although high ranking USPTO officials are members of the BPAI, along with administrative patent judges, under 35 U.S.C. § 6(a), the vast majority of BPAI panels consist only of administrative patent judges. Kappos’s and Barnes’s decision to sit on the Frye panel indicates the significance of this case to the USPTO.

For a copy of the Frye opinion, click here.

Claims Held Invalid for Failing to Include the Best Mode Within the Specification
Although allegations of a patentee’s failure to disclose the best mode of a claimed invention rarely succeed in rendering asserted claims of a patent invalid, the Federal Circuit recently affirmed in Ajinomoto Co., Inc. v. International Trade Commission a determination of invalidity by the U.S. International Trade Commission that should alert patent practitioners and inventors of the importance of disclosing the preferred mode of practicing an invention. In accordance with U.S. patent rules and as highlighted by this case, in drafting a patent application, practitioners should inquire, and inventors should disclose, if there is a preferred embodiment of a claimed invention or any other preferences that materially affect the properties of the invention.

For more analysis of this decision, and actions you can take to prevent a similar outcome, click here.

Ground-breaking Federal District Court Ruling on Gene Patents
The Southern District of New York recently decided Association for Molecular Pathology et al. v. United States Patent And Trademark Office et al. involving patent claims related to so-called “gene patents.” The plaintiffs asked the federal district court to invalidate several gene patents owned by the University of Utah and Myriad Genetics that are directed to two isolated gene sequences, BRCA1 and BRCA2, that researchers had discovered to be correlated with a heightened susceptibility to breast cancer. In an important decision largely affecting research institutions and pharmaceutical companies, the court determined that various ones of the patents’ claims were invalid as encompassing nonstatutory subject matter.

For further discussion of this case, click here.

Green Technologies Given Special Treatment in the United States, United Kingdom, and South Korea
Our January 2010 issue included a report about the USPTO’s “Green Technology Pilot Program,” which affords applicants the ability to petition to have an application “made special” if the application pertains to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction. This program is expected to reduce the time it takes to obtain a patent by an average of one year. Similar prosecution accelerating programs for green technologies have also been initiated by the Intellectual Property Office (IPO) of the United Kingdom and the Korean Intellectual Property Office (KIPO). Applicants taking advantage of the United Kingdom program are expected to be able to obtain a patent in as little as nine months, while applicants taking advantage of the South Korean program can potentially obtain a patent in as little as one month. Patent applicants and owners of green technologies should consider accelerating the examination of their applications in any of these patent offices.

For more information about the United Kingdom and South Korean accelerated programs for green technologies, click here.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. 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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