Updates on IP news from our global team!

Medtronic Pays the Cost of PTAB’s Continued Misunderstanding of 35 U.S.C. § 101

In software and life science technologies, many patent applicants eventually receive an office action rejecting their claimed invention as being directed to an abstract idea, natural law, or another judicial exception. This infamous rejection is typically referred to as an Alice rejection or a § 101 rejection in view of the relevant Supreme Court case and U.S. statute. In attempting to overcome such § 101 rejections, many patent applicants have complained that the USPTO’s subject matter eligibility (SME) test is applied inconsistently among different organizations at the USPTO, even amongst different examiners in the same technology art unit. A recent patent application filed by medical device company, Medtronic, provides a clear illustration of the confusion in applying the USPTO’s SME test.   

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When is a Published Patent Application Deemed Prior Art in IPR?

Photo Credit: TechieTech Tech

The U.S. Court of Appeals for the Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) decision in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., holding that a published patent application can qualify as prior art from its filing date. The Federal Circuit decision answered the previously unanswered question whether a published patent application should be considered prior art as of its filing date or, instead, its publication date in Inter Partes Review (IPR) proceedings. 

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Federal Circuit Elaborates on Obviousness Standard Under 35 U.S.C. § 103

In the United States, one of the reasons a patent claim may not be obvious over various prior art references is if one of those references “teaches away” from the modification or combination needed to arrive at the claim. The standard for what constitutes “teaching away” was addressed in a recent decision of the U.S. Court of Appeals for the Federal Circuit in an appeal from an inter partes review (IPR), which is a post-grant proceeding conducted by the Patent Trial and Appeal Board (PTAB) of the United Stated Patent and Trademark Office.

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Enforcement of Intellectual Property Laws in The United Arab Emirates

The United Arab Emirates is a leading jurisdiction for protection of intellectual property rights and promoting the implementation of related laws. This has been demonstrated through the continuous updating and development of the legislative system in addition to preparing and developing law enforcement cadres and agencies in all emirates of the country to ensure the implementation of legislation and laws on the ground.

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