PTO proposes rules for new post grant proceedings *

USA - February 9 2012
The United States Patent and Trademark Office (PTO) published three Notices of Proposed Rulemaking regarding the implementation of the inter partes review (IPR) (Changes to Implement Inter Partes Review Proceedings), post grant review (PGR) (Changes to Implement Post-Grant Review Proceedings), and the transitional program for covered business methods (Changes to Implement Transitional Program for Covered Business Method Patents) of the Leahy-Smith America Invents Act (AIA), passed in September 2011.

Co-authors: Wab P. Kadaba, Wendy Choi, Paul C. Haughey, Michael S. Pavento.

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Myriad questions with but two answers: isolated DNA is patentable subject matter but certain diagnostic method claims are patent *

USA - July 29 2011
In reversing the summary judgment of the Southern District of New York, the Court of Appeals for the Federal Circuit held today in an opinion by Judge Lourie that claims to isolated DNA and claims for methods of screening potential cancer therapeutics were directed to patentable subject matter. 

Co-authors: Wendy Choi, Frederick L. Whitmer, William B. Kezer Ph.D., Leslie T. Grab, Jennifer Giordano Coltart.

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Supreme Court clarifies workings of the Bayh-Dole Act on patent rights to inventions in federally funded projects *

USA - June 10 2011
In a 7-2 decision, the Supreme Court affirmed the longstanding rule that patent rights to inventions belong to the “inventor.”

Co-authors: Wendy Choi, Sean F. Parmenter , William B. Kezer Ph.D..

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He who pays the piper calls the tune. or does he? The Supreme Court to decide who owns patent rights to inventions produced in federally funded projects? *

USA - November 3 2010
The Supreme Court granted certiorari on November 1, 2010, in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. (09-1159), involving the ownership of inventions made with federal funding under the 1980 Bayh-Dole Act.

Co-authors: Wendy Choi.

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"What's inequitable?" En banc panel to answer for patent prosecutors *

USA - April 27 2010
In an action that could result in re-definition of inequitable conduct in patent prosecution, the Federal Circuit yesterday ordered an en banc rehearing on several critical inequitable conduct issues.

Co-authors: John S. Pratt, Jason D. Gardner, Camilla C. Williams.

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