The Wisdom of Athena: Justices Criticize Current State of Patent Eligibility for Diagnostic Methods

Some of the most difficult problems in patent law today concern what can be patented. Patent-eligible subject matter is defined in 35 USC § 101, but the Supreme Court has added some exceptions for abstract ideas, laws of nature, and natural phenomena. These have led to controversy and uncertainty about what inventions can be protected by patents. This is starkly illustrated by medical diagnostic methods. In a recent Federal Circuit decision denying a petition for rehearing en banc, all twelve of the Federal Circuit judges agreed that claims to the diagnostic method on appeal ought to be eligible for patentability, yet the patent was found to be invalid as unpatentable under current law.
AIA Inter Partes Review Is Not Unconstitutional to Pre-AIA Patents under the Fifth Amendment's Takings Clause

Since the Supreme Court's decision in Oil States Energy Servs., LLC, v. Greene's Energy Grp., LLC, 138 S. Ct. 1365 (2018), various constitutional challenges have continued to be raised by patent owners whose pre-AIA patents have been cancelled in AIA Inter Partes Review (IPR) proceedings. The U.S. Court of Appeals for the Federal Circuit (CAFC) has finally addressed one such challenge. In Celgene Corp. v. Peter, Appeal No. 18-1167 (Fed. Cir. July 30, 2019), the CAFC decided that the USPTO's cancellation of claims of a pre-AIA patent in AIA IPR proceedings does not constitute an unconstitutional "taking" of private property without "just compensation." In Celgene, the CAFC explained that because patents have been subject to administrative cancellation for more than 40 years on similar or substantially the same grounds as those that may be raised in an IPR, grant of a US patent has long been understood to mean: "you may enjoy and exercise your patent rights until the USPTO cancels them, or the patent expires, whichever occurs first." Thus, such cancellation does not violate the Takings Clause of the Fifth Amendment of the U.S. Constitution.
USPTO Updates: Proposed New Fees and Fee Increases

On July 31, 2019, the USPTO published a federal register notice regarding changes to various USPTO fees.   In particular, the USPTO proposes three new fees: (1) a surcharge fee of $400 for filing a nonprovisional application in a non-DOCX format; (2) pro hac vice admission fees of $250; and (3) an annual patent practitioner fee ranging from $70 to $340.

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An Office Action without Examination: Brazil has Ambitious Plan to Tackle Patent Application Backlog

AIPLA's IP Practice in Latin America Committee recently sent a delegation to Rio de Janerio, which included committee member and Osha Liang partner, Ms. Carlyn Burton. During this trip, the delegation met Mr. Claudio Vilar Furtado, President of Brazil's Instituto Nacional da Propriedade Industrial (INPI) on August 22, 2019. In particular, Mr. Furtado spoke to the delegation about two new resolutions issued on July 9, 2019, by the INPI. These two resolutions embody his office's efforts to eliminate the unexamined patent application backlog in Brazil. Specifically, these two resolutions will streamline prosecution within a two-year timeframe.
Congratulations to Osha Liang partners Jonathan Osha and Jeffrey Bergman
on being ranked 2019 Super Lawyers

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