Overcoming Sect. 101 Rejections Post-Alice Corp.

89 Pages·2015·1.65 MB·English

by  Erika Simon

Presenting a 90-Minute Encore Presentation of the Webinar with Live, Interactive Q&A
Overcoming Sect. 101
Rejections Post-Alice Corp.
Leveraging USPTO Guidance and Recent Decisions to Meet Sect.101 Patent Eligibility Requirements

TUESDAY, MARCH 31, 2015
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
Today’s faculty features:
Katherine M. Kowalchyk, Ph.D., Partner, Merchant & Gould, Minneapolis
Denise M. Kettelberger, Ph.D., Counsel, Sunstein Kann Murphy & Timbers, Boston
Charles Bieneman, Member, Bejin Bieneman, Detroit

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Guidance Through the
Maze of Patentable Subject
Matter for Life Sciences
Katherine M. Kowalchyk
Merchant and Gould
March 31, 2015
The Statute and its
Exceptions
Whoever invents or discovers any new and
useful process, machine, manufacture, or
composition of matter, or any new and
useful improvement thereof, may obtain a
patent therefor, subject to the conditions
and requirements of this title
EXCEPT (according to the courts)
Natural law
Natural product
Abstract idea
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Supreme Court 101Trifecta

• Mayo Collaborative Servs. v.

Prometheus Labs., Inc., 132 S. Ct.
1289 (2012).

• Ass'n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct.
2107 (2013).
• Alice Corp. Pty. Ltd. v. CLS Bank
Int'l, 134 S. Ct. 2347 (2014).
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Mayo: Where’s the Inventive Concept
• Inventive concept was only natural law
natural law was the correlation of the
metabolite level and the toxicity
• Nothing new to add anything significant to
the Inventive Concept
determining step was not specified,
standard diagnostic method steps
• An application of a law of nature is
patentable: e.g. Diehr

process transformed or reduced to a
different state or thing: new steps or
new result
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Myriad: Patent System as Gatekeeper
• DNA is a product of nature
claimed product did not differ in
sequence: basic tools
• Separation of or locating a gene from
surrounding genetic material is not
sufficient for patentability
Identify markedly different
characteristics: cDNA
(Chakrabarty vs. Funk Bros.)
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Alice: Basic Tools of Business
• Two step process:
1) is the claim directed to an
exception;
2) does it add enough
additional content (inventive
concept) to render the exception
patentable
• Additional content-(102/103)
technology/new steps or
features

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Post Alice Cases
In re BRCA1- & BRCA2-Based Hereditary Cancer
Test Patent Litig. v. Ambry Genetics Corp., 774
F.3d 755 (Fed. Cir. 2014).

Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 14-
1139 (Fed. Cir. argued Nov. 7, 2014).

Genetic Techs. Ltd. v. Bristol-Myers Squibb Co.,
Nos. 12-394, -396, 2014 U.S. Dist. LEXIS 154443
(D. Del. Oct. 30, 2014), appeal docketed, No. 15-
1203 (Fed. Cir. Dec. 18, 2014).

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