|U.S. Patent and Trademark Office Issues Guidance in View of Prometheus and Myriad|
Daniel W. Clarke, Peter F. Corless, Christopher R. Cowles, Ralph A. Loren; Edwards Wildman Palmer LLP;
March 11, 2014, previously published on March 2014 On March 4, 2014, the United States Patent and Trademark Office (USPTO) issued a highly anticipated Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena & Natural Products (“Guidance”). The Guidance is promulgated for...
|Supreme Court Invalidates Claims to Isolated DNA, but Upholds Patent Eligibility of cDNA in Myriad|
Daniel W. Clarke, Peter F. Corless, Ralph A. Loren, Brian P. Murphy; Edwards Wildman Palmer LLP;
June 17, 2013, previously published on June 2013On June 13, 2013, the United States Supreme Court issued a highly anticipated decision in Association for Molecular Pathology v. Myriad Genetics, Inc. (“Myriad”) concerning the patent eligibility of human genes.
|USPTO Publishes Final Rules and Examination Guidelines for Implementing First-Inventor-to-File Provisions of America Invents Act|
Peter F. Corless, Brian Landry; Edwards Wildman Palmer LLP;
February 15, 2013, previously published on February 14, 2013On February 14, 2013, the USPTO published final rules and examination guidelines related to the first-inventor-to-file provisions of the America Invents Act (“AIA”). The initial guidelines generated significant feedback and the final guidelines modify the proposed rules in a manner that...
|Direct Infringement by Single Entity Not Necessary for Induced Infringement of Method Patent|
Peter F. Corless, Andrew T. O'Connor, Peter C. Schechter; Edwards Wildman Palmer LLP;
September 10, 2012, previously published on September 4, 2012On August 31, 2012, in a controversial en banc 6-5 opinion in the cases of Akamai Technologies Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corporation, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) held that an act of direct infringement...
|Biomedical Diagnostic Patents Post-Prometheus|
Elbert C. Chiang, Peter F. Corless, Kellie K. DiNapoli; Edwards Wildman Palmer LLP;
March 22, 2012, previously published on March 21, 2012On March 20, 2012, the U.S. Supreme Court issued its opinion in Mayo Collaborative Services v. Prometheus Labs., Inc. The Prometheus opinion makes clear that biomedical diagnostic methods are patentable. However, determination of patent eligibility will be subject to higher scrutiny under 35 U.S.C....
|Tafas v. Doll, Appeal 2008-1352 (Fed.Cir. March 20, 2009)|
Peter F. Corless; Edwards Angell Palmer & Dodge LLP;
April 1, 2009, previously published on March 23, 2009On March 20, 2009, a three-judge panel of the United States Court of Appeals for the Federal Circuit (Federal Circuit) rendered a decision that has important implications for U.S. patent practice.