Best Strategies and Practical Tips in Overcoming Biotech Patent Eligibility Rejections
Since its pivotal decisions on Alice Corp. v. CLS Bank last 2014, Assn. for Molecular Pathology v. Myriad Genetics Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. the United States Patent and Trademark Office (USPTO) has been stricter in granting patent eligibility for all types of technology, including biotech patents. Recent rejections under §101 pose an alarming situation for patent applicants, making them more cautious in their succeeding applications.
Listen as a panel of distinguished patent professionals team up with The Knowledge Group to provide the audience with the latest issues surrounding §101 eligibility rejections. Speakers will analyze, among other things, recent court decisions and rejections concerning biotech patent applications. They will also offer best practices and strategic tips in overcoming such rejections.
In a LIVE Webcast, the speakers will discuss:
- Overview of Supreme Court's Decision on Alice Corp. v. CLS Bank, Assn. for Molecular Pathology v. Myriad Genetics Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc.
- Rejections under §101 since Alice Corp., Myriad and Prometheus
- Lessons Learned from Recent Rejections
- Steps in Assessing Patent Eligibility for Biotech Patents
- Best Practices and Strategic Tips
Nicholas A. Zachariades, Special Counsel
Mintz Levin Cohn Ferris Glovsky and Popeo PC
- Brief overview of cases
- U.S.P.T.O. guidance examples to identify patent eligible examples
- Practice tips and claim drafting in view of these court decisions.
Kurt G. Briscoe, Member
Norris McLaughlin & Marcus, P.A.
- Focus claims on novelty/inventive step over prior art and other potential uses of the judicial exception
- Add treatment/administering/immunization steps to rejected diagnostic claims
- Add structure/function/other properties to rejected products of nature claims
- Intertwine natural correlation/product of nature into rejected method claims and add technological beef/human intervention to remaining steps
- Interview/work closely with examiner and use IP intelligence services (e.g. Juristat ®)to improve chances of success
Keith Campbell, Shareholder
Mueting, Raasch & Gebhardt, P.A.
- Drafting and prosecuting in light of Streamlined Eligibility Analysis
- Working within the USPTO guidelines for eligibility analysis
- Tension between 35 U.S.C. 101 and 103 for method claims
- Do recent court decisions provide any clarity regarding 35 U.S.C. 101
Who Should Attend:
- Patent Holders
- Patent Applicants
- Biotech Companies
- Patent Licensing Attorneys
- Patent Consultants
- Patent Litigators
- Corporate Counsel
- In-house Counsel
- Other Related and Interested Individuals
Nicholas is an attorney in Mintz Levin’s Boston office and provides patent opinion counseling and handles patent procurement for clients in the biotechnology and pharmaceutical industries. He has extensive experience in the areas of biotechnology, immunology, small molecules, molecular biology, regenerative medicine, virology, vaccines, and oncology. Nicholas has been practicing intellectual property law for 14 years. He has significant experience working with cutting-edge biomedical technology institutions and other clients — including major US universities, research institutes, start-ups, large- and medium-size US companies, and international corporations — and has handled a wide range of IP requirements, including patent drafting, patent prosecution, freedom-to-operate opinions, validity opinions, invalidity opinions, patentability opinions, infringement opinions, licensing, due diligence, and patentability assessments.
Nicholas is an attorney in Mintz Levin’s Boston office and provides patent opinion counseling and handles patent procurement for clients …
Kurt G. Briscoe, a Member of Norris McLaughlin & Marcus, P.A., devotes his practice to patent, trademark, and other intellectual property matters. He has over 25 years of experience in intellectual property law, including five years, from 1983 to 1988, as an examiner in the United States Patent and Trademark Office. Most of Kurt’s practice, including his experience as a patent examiner, has been in the field of pharmaceuticals and biotechnology. Kurt regularly represents domestic and international companies in connection with the preparation and prosecution of patent and trademark applications. In addition, he regularly negotiates licensing and nondisclosure agreements for these clients. He provides experienced worldwide IP portfolio management, including strategic, freedom-to-operate, invalidity, and infringement opinions. He also performs due diligence for clients prior to their acquisition of patents and trademarks to reveal any patent validity or enforceability problems, or patent prosecution events that impact patent claim scope.
Kurt G. Briscoe, a Member of Norris McLaughlin & Marcus, P.A., devotes his practice to patent, trademark, and other intellectual …
Keith M. Campbell, a shareholder at Mueting, Raasch & Gebhardt, P.A., is a registered patent attorney whose practice focuses on patent preparation and prosecution, due diligence, freedom-to-operate opinions and analysis and portfolio management. Keith represents clients with interests in both domestic and international markets in the areas of biotechnology, chemical, pharmaceutical, materials science, and mechanical arts, whose technologies include medical devices, small molecules, polymers and coatings, cell and tissue culture technologies, immunology, and peptide and nucleic acid technologies. Keith has previously worked as in-house counsel for a Fortune 500 company.
Keith M. Campbell, a shareholder at Mueting, Raasch & Gebhardt, P.A., is a registered patent attorney whose practice focuses on …
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Method of Presentation:
Experience in patent law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Areas of Professional Practice
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About Mintz Levin Cohn Ferris Glovsky and Popeo PC
Mintz Levin’s attorneys represent Fortune 500 companies, entrepreneurs, emerging growth and established companies, government agencies, and research institutes. The firm’s IP team handles all aspects of patents, trademarks, copyrights and trade secrets. The firm has deep experience preparing and prosecuting patents to issuance on clients’ most complex biologic and chemical patents. Mayo and other court rulings have made patenting certain kinds of biotech innovations more challenging, and Mintz Levin attorneys help clients achieve their desired patent protections even in light of these industry changes. The educational and professional backgrounds of Mintz Levin’s premier patent prosecution professionals ensure client technologies are deeply understood so the attorneys can provide technology-driven recommendations which enhance patent strategy. They understand the technology at the core of client innovations, are steeped in how court rulings are being applied, and are able to craft claims which survive USPTO scrutiny.
About Norris McLaughlin & Marcus, P.A.
Norris McLaughlin & Marcus is a mid-sized, regional law firm that serves the legal needs of businesses and families in New Jersey, New York, and Pennsylvania. The firm is uniquely positioned to represent middle-market companies, Fortune 500 corporations, and individuals. Norris McLaughlin & Marcus is attentive and responsive to the needs of established and emerging middle-market, privately-owned companies, providing quality and comprehensive legal services. They are dedicated to the success of their clients, whether in a transaction, in court, or in the course of everyday business. The firm brings niche industry experience to companies that may have outgrown their existing legal service provider or need more experience, resources, and in-depth knowledge of their particular market.
About Mueting, Raasch & Gebhardt, P.A.
Mueting, Raasch & Gebhardt, P.A. (“MRG”) is an intellectual property law firm with expertise in patent preparation, prosecution, and opinions. MRG’s knowledgeable attorneys practice in a wide variety of technology areas including biotechnology, pharmacology, immunology, analytical chemistry and instrumentation, organic chemistry, chemical engineering, material science, mechanical engineering, designs, physics, electrical engineering, electro-mechanical systems, and computer software. MRG is committed to providing our clients with high quality legal work at reasonable rates, and partner with them to tailor our services to cost-effectively meet their needs.