Pharmaceutical and biotech companies breathed a sigh of relief Monday when the Federal Circuit unanimously ruled in a precedential opinion that the mere sale of manufacturing services to create embodiments of a patented product is not a “commercial sale” of the invention that triggers the on-sale bar of 35 U.S.C. § 102(b) (pre-AIA).[1] The en banc opinion in The Medicines Company v. Hospira Inc., Case No. 14-1469 (Fed. Cir. July 11, 2016) considerably mitigates patent law’s disparate treatment of inventors who rely upon contract manufacturing organizations (CMOs) and an those who manufacture in-house.
Continue Reading En Banc: Federal Circuit Provides Guidance on Application of On-Sale Bar to Contract Manufacturers
Court of Appeals for the Federal Circuit Sides With PTAB in Inter Partes Review Appeal
In a decision imparting more certainty to the Post Grant Review process, the Court of Appeals for the Federal Circuit (the “CAFC”) held that it lacks jurisdiction to review the Patent and Trademark Office’s (the “PTO’s”) decision to institute inter partes review (“IPR”). It also concluded that the PTO properly adopted the broadest reasonable interpretation standard for reviewing claims under IPR proceedings.
Continue Reading Court of Appeals for the Federal Circuit Sides With PTAB in Inter Partes Review Appeal
USPTO Issues Preliminary Examination Instructions in Light of Alice Corp.
In Alice Corporation Pty. Ltd. v. CLS Bank International, el al., Case No. 13-298 (decided June 19, 2014) (“Alice Corp.”), the Supreme Court unanimously held that the subject patent claims are not patent-eligible under 35 U.S.C. § 101. The patents at issue are directed toward a process for mitigating “settlement risk,” i.e., for financial exchange transactions, in which a computer system is used as an intermediary between the parties to the transaction. The patent claims include a method for exchanging financial obligations, a computer system configured to carry out the method, and a computer-program-product claim covering the same process. The Court held that “the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” Alice Corp., slip op. at 1.
Continue Reading USPTO Issues Preliminary Examination Instructions in Light of Alice Corp.