Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part II

Author: Adriana L. Burgy
Editor: Leslie A. McDonell

As former Chief Judge Giles Rich proclaimed, “The name of the game is the claim.” In Part II of “Myriad, Mayo, Chakrabarty, Oh My:  Strategies for Life Sciences Diagnostics” (link to Part I can be found here), we will look at claiming strategies.

Often times, the number of claims that protect an invention is overlooked and not necessarily a discussion point when drafting a patent application. And, gone are the days of 100 plus claims due to excess claim fees, but that does not mean applicants should be limited to three independent claims and a total of twenty claims, i.e., the number of claims allotted with the basic filing fee; definitely not.  In an earlier post, we discussed examining the number of claims that protect an invention; the post can be found here. The number of claims should also be a strategic tool when addressing Section 101 rejections.  Continue reading

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To sign up to receive the latest news and updates from the USPTO conveniently via e-mail click here.

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Patent Quality Chat – February 14, 2017: Learning to Love Application Data Sheets

Author: Adriana L. Burgy
Editor: Stephanie Sanders

On February 14, 2017, the USPTO’s Patent Quality Chat webinar series continued with “Understanding the ADS (Application Data Sheet):  Little Things Make a Big Difference.”  A link to the presentation materials and the 2017 quality chat series can be found here.  For this chat, the USPTO’s Janice Tippett, who is a Management and Program Analyst in the Office of Patent Application Processing (OPAP), highlighted the various issues applicants/stakeholders are having with filing Application Data Sheets (ADSs) and corrected ADSs.  Continue reading

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The USPTO seeks feedback from its stakeholders on whether the accelerated examination program provides a sufficient benefit to the public to justify the cost of implementation. The Federal Register notice can be found here; written comments must be received on or before March 13, 2017.

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Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part I

Author: Adriana L. Burgy
Editor: Leslie A. McDonell and Amanda K. Murphy, Ph.D.

Patent eligibility is a balancing act; the Supreme Court explained in Mayo that “too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ides.” In an era of subject matter eligibility uncertainty, the on-going question is: How do you deal with 101 rejections and, in particular, for diagnostic inventions in the life sciences space? In a series of posts, we will explore different strategies to answer that question. Continue reading

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