June 2013 Prosecution Group LuncheonPresentation Transcript
Patent ProsecutionJune 2013June 13, 2013
Overview• Welcome• Quick Patent Prosecution Updates• General Discussion
Myriad Case• Facts:– Myriad Genetics located and developed a test for theBRCA1 & BRCA2 genetic mutations which substantiallyincrease the risk of breast and ovarian cancer– Example Composition Claims Claim 1 “[a]n isolated DNA coding for a BRCA1 polypeptide,”which has “the amino acid sequence set forth in SEQ IDNO:2.” = DNA Claim 2 “[t]he isolated DNA of claim 1, wherein said DNA hasthe nucleotide sequence set forth in SEQ ID NO:1.” SEQ IDNO:1 = cDNA• Held:– DNA, an even isolated form- not patent eligible under 35U.S.C. 101– cDNA (Complementary DNA), which includes the sameprotein-coding information found in the DNA but omitssegments that don’t code for proteins- may be patenteligible because it is not naturally occurring.
Myriad Case• Notes:– No method claims- innovative method ofmanipulating genes while searching for BRCAgene = patent eligible– Claims don’t involve new applications ofknowledge– Did not consider patent eligibility of DNA inwhich the nucleotides are altered
Myriad Case• JUSTICE SCALIA, concurring in part and concurringin the judgment.I join the judgment of the Court, and all of its opinionexcept Part I–A and some portions of the rest of theopinion going into fine details of molecular biology. Iam unable to affirm those details on my ownknowledge or even my own belief. It suffices for meto affirm, having studied the opinions below and theexpert briefs presented here, that the portion of DNAisolated from its natural state sought to be patented isidentical to that portion of the DNA in its natural state;and that complementary DNA (cDNA) is a syntheticcreation not normally present in nature.
Power of Attorney• Having Powers of Attorneys kicked back fromthe USPTO because the Applicant is notdesignated on the ADS• Solution: file ADS naming the Applicant alongwith Power of Attorney documents
AIA Transition Applications• ADS- AIA StatementSecretary’s instructed to NOT check this box,unless attorney specifically instructs otherwise.Attorney’s responsibility to decide.
AIA Transition Applications• How to fix if you accidentally checked the AIAStatement box on the ADS– Submit a corrected ADS with the boxunchecked.– Cover letter explaining that checking the boxwas inadvertent.
Cooperative Patent Classification (CPC)• Joint (Global) Classification System Based onthe European Classification system (ECLA)– More granular than the International PatentClassification (IPC) system• Participants– EPO– USPTO– Korean Patent Office (KIPO)– China (SIPO)
Cooperative Patent Classification (CPC)• Now Implemented in the USPTO (January 1,2013)– 2 Year Transition Newly filed US applications ("A" publications) will beclassified in the USPC and the CPC US patent grants ("B" publications) will be classifiedin either the USPC or the USPC and the CPC CPC symbols will be printed on the front page, nextto the IPC and USPC symbols.– By January 1, 2015- USPTO will exclusivelyclassify CPC (but will keep IPC)
Cooperative Patent Classification (CPC)• Sections– A: Human Necessities– B: Operations and Transport– C: Chemistry and Metallurgy– D: Textiles– E: Fixed Constructions– F: Mechanical engineering– G: Physics– H: Electricity
Cooperative Patent Classification (CPC)
Cooperative Patent Classification (CPC)• Working on implementing CPC for our subjectmatter conflicts– Converting US classes to CPC• Searches– Need to start using CPC
After Final Consideration Program Pilot 2.0• Avoids the Expense of RCE’s• Timing– Responses to Final Office Actions Filed FromMay 19, 2013 to September 30, 2013• Requirements (NO FEE)– Request for Consideration Under Pilot(PTO/SB/434)– Amendment to at least one independent claimthat does not broaden it– Willing to participate in an interview
After Final Consideration Program Pilot 2.0
After Final Consideration Program Pilot 2.0• What does the Examiner Get?– Up to 3 Hours non-production time– 10 day adjustment of docket management clock• Outcome– Examiner can deny request (file RCE)– Allow the application– Request interview• Need to conduct interview within 10 days– Otherwise back to filing RCE
After Final Consideration Program Pilot 2.0• Results- it works– Filed Request June 5, 2013– Examiner called yesterday (June 12) requestinga few minor changes for Notice of Allowance– Saved client the expense and time of an RCE!