Posts in MARCH 2018
How to patent systems, software, and business method inventions: What have recent cases taught us?

Author

Richard Bone

Presentation

255th ACS National Meeting - New Orleans
"Update On Patent Eligibility: Are things getting better for Patent Applicants?"

Abstract

Alice in the Rear-View Mirror - Given the significant role that computer processes play in most areas of chemical research, the effects of the Alice decision are not confined to the high-tech industry. With now almost 4 years’ experience of post-Alice jurisprudence in the lower courts and application of the PTO’s “Alice rejections”, the speaker will review the key patterns that have emerged, with a particular focus on areas of computation that will be of interest to chemists.

MARCH 2018Katie
How to patent medical diagnostics and genetics related inventions: What have recent cases taught us?

Author

Jonathan L. Kennedy

Presentation

255th ACS National Meeting - New Orleans
"Update On Patent Eligibility: Are things getting better for Patent Applicants?"

Abstract

This presentation will provide a brief review of the landmark decisions from the United States Supreme Court that reshaped the patent eligibility framework, including, Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. v. CLS Bank Int’l and the two-prong test that developed from these cases.

This session program will review some of the more recent cases interpreting and applying the standards provided by the U.S. Supreme Court in its landmark decisions Mayo Collaborative Servs. v. Prometheus Labs., Inc.; Ass’n for Molecular Pathology v. Myriad Genetics, Inc.; and Alice Corp. v. CLS Bank Int’l  as they apply to medical diagnostics technology and other chemical technologies dealing with products of nature and genetic code. In practice how is the two-part patent eligibility test being applied and what can we learn from these cases to develop and claim patentable inventions in this technical art?

MARCH 2018Katie
Mayo, Alice, Prometheus, Enfish? What is the current test for determining if an invention is eligible for patent filing?

Author

Richard Bone
Jonathan L. Kennedy

Presentation

255th ACS National Meeting - New Orleans
"Update On Patent Eligibility: Are things getting better for Patent Applicants?"

Abstract

This presentation will provide a brief review of the landmark decisions from the United States Supreme Court that reshaped the patent eligibility framework, including, Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. v. CLS Bank Int’l and the two-prong test that developed from these cases.

MARCH 2018Katie
Issues in chemical commercialization

Author

Erin Sommers, erin.sommers@finnegan.com
Krista E. Bianco, krista.bianco@finnegan.com
Irene Hantman, ihantman@verdantlaw.com
Greg Sower, GSower@ramboll.com

Presentation

255th ACS National Meeting - New Orleans
"Issues in Chemical Commercialization"

Abstract

This program will address issues in chemical commercialization from regulatory compliance to Intellectual Property (IP) and contractual considerations. Participants will learn about the regulatory burden the Toxic Substance Control Act (TSCA) imposes on introducing chemicals into commerce from R&D to commercialization. Panelists will discuss protecting intellectual property through patents and EPA’s TSCA notification process. In addition, panelists will discuss contract provisions important to protecting inventors’ rights. Regulatory hurdles will be discussed as well. These include developing testing data for new chemicals and protecting confidential business information (CBI). TSCA does not require testing for new chemicals, however, failure to provide adequate toxicity testing can slow the EPA review process dramatically resulting in delayed access to market and unforeseen testing costs – testing can be designed to provide information for EPA review as well as REACH and GHS classifications. The Lautenberg amendments to TSCA have significantly restricted CBI claims in the US. Additionally, chemicals pursuing GRAS status for food uses will have to make safety information publicly available.

MARCH 2018Katie
Review of recent Federal Circuit decisions relevant to what scientists need to know about patent filing and prosecution

Author

Xavier Pillai, xpillai@leydig.com
Andrew Berks, aberks@cittonechinta.com

Presentation

255th ACS National Meeting - New Orleans
"Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions"

Abstract

Chemical and pharmaceutical companies invest enormous amounts of money and inventor hours to discover and develop new materials such as drugs and processes for making them, as well as other inventions. Such companies also attempt to protect their inventions by securing patents. The success of these inventions in the marketplace depends on a number of factors, the foremost of which being the strength of the patents obtained to protect them. These patents are expected to protect the vast investment of money and time in creating these inventions, and the product market share, for the next nearly twenty years.

However, competitors will try to undermine the value of the inventions by challenging the strength of the patents, including their validity and coverage by the patent claims of their own products, in a court of law.

Recently, many seemingly strong and valuable patents have been invalidated or narrowly viewed and found not infringed. Recent court decisions reinforce the axiom that every word that goes into describing the invention in a patent application must be chosen with extreme care. This session will provide insights into how to reduce the chances of losing in a patent battle against an infringer, including practical pointers on how to write winning patent applications. This session will also analyze recent Federal Circuit court decisions that have invalidated such patents or found them not infringed, as real world examples of what can go right or wrong years after a patent is granted.

MARCH 2018Katie