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TC’s inside IP
A quarterly newsletter from the Intellectual Property Practice Group at Thompson Coburn LLP
Green Tech Gets the Green Light By William Holtz, Ph.D.
In December 2009, the United States Patent and
applicants to petition to have their green technology
Trademark Office (USPTO) implemented a pilot pro-
applications examined out of turn, thus reducing the
gram to accelerate the examination of certain patent
time it takes to obtain a patent by about one year.
applications pertaining to green technologies. These technologies include improving environmental quality,
Under the pilot program, the USPTO will accept the
energy conservation, renewable energy resources
first 3,000 petitions to make special for non-provi-
and reducing greenhouse gas emissions.1 In a news
sional utility applications filed before December 8,
release announcing the Green Technology Pilot Pro-
2009, that have not yet received a first office action.3
gram, the USPTO stated “The new initiative, coming
The program does not include applications filed after
days before the United Nations Climate Change Con-
December 8, 2009, and thus is not necessarily an
ference in Copenhagen, Denmark, will accelerate the
incentive to file new green technology applications.
development and deployment of green technology,
Petitions to make special under the pilot program
create green jobs, and promote U.S. competitiveness
must be filed before December 8, 2010. Eligible
in this vital sector.”2 U.S. Commerce Secretary Gary
applications must be ones assigned to an approved
Locke was quoted as saying “by ensuring that many
art classification.4 Although the eligible classifications
new products will receive patent protection more
currently do not cover all areas of green technologies,
quickly, we can encourage our brightest innovators
depending on the effectiveness of the pilot program
to invest needed resources in developing new tech-
and the resources available, the program may be
nologies and help bring those technologies to market
extended to include more classifications in the future.
Petitions to make special must be accompanied by
The goal of the Green Technology Pilot Program is
a request for early publication and an early publica-
to decrease the pendency of previously filed appli-
tion fee if the application has not been published.
cations. According to the USPTO, it currently takes
Eligible applications may contain a maximum of three
about 30 months for applications in green technology
independent and twenty total claims. Claims may be
areas to receive a first office action and 40 months
amended or canceled to meet this requirement. The
to receive a final decision. The pilot program allows
USPTO has also indicated that for applications cur-
Green Tech Gets the Green Light by William Holtz, Ph.D. . 1Federal Circuit “Messes with Texas” on Motions to Transfer by Jason M. Schwent . 3Lowering the Bar for Filing Declaratory Judgment Actions: Triggering Declaratory Judgment Jurisdiction by Pamela M. Miller . 5Are Test Results Required to Show the Utility of an Incredible Pharmaceutical Invention? by Steven M. Ritchey and Charles P. Romano Ph.D. . 6
Thompson Coburn LLP ∙ One US Bank Plaza, St. Louis, Missouri 63101
rently assigned to a non-eligible art classification, it is
1 Pilot Program for Green Technologies Including
possible to amend the scope of the claims so that the
Greenhouse Gas Reduction, 74 Fed. Reg. 64,666
claimed invention will potentially fall under an eligible
(Dec. 8, 2009), available at http://www.uspto.gov/
classification. The applicant can then suggest to the
USPTO that the amended application be assigned an
2 Press Release, United States Patent and Trademark
eligible art classification. Also, for applications not
Office, The U.S. Commerce Department’s Patent and
yet assigned an art classification, the applicant may
Trademark Office (USPTO) Will Pilot a Program to
suggest that the application be assigned to an eligible
Accelerate the Examination of Certain Green Technol-
ogy Patent Applications (Dec. 7, 2009), http://www. uspto.gov/news/pr/2009/09_33.jsp.
In a January 12, 2010 article, David Kappos, the Under Secretary of Commerce and Director of the
3 Applications entering the U.S. national stage under
United States Patent and Trademark Office, said that
35 U.S.C. § 371 on or after December 8, 2009, may
after barely a month, several hundred requests to
also be eligible to participate in the pilot program if
make special had been filed.6 Kappos was optimistic
the international application on which the U.S. appli-
that after the initial twelve month duration of the pilot
cation is based was filed before December 8, 2009.
program, the success of the program will warrant
4 A list of the eligible art classifications can be found
committing more USPTO resources to “speed U.S.
at 74 Fed. Reg. 64,666, 64,668-69 (Dec. 8, 2009),
green-tech innovations into the marketplace where
available at http://www.uspto.gov/patents/law/
they can address climate change and create jobs.” In
a summary report posted on the USPTO website on
5 Frequently Asked Questions about the Pilot Program
February 24, 2010, the office reported that it had re-
for Green Technologies Including Greenhouse Gas
ceived 773 petitions, 117 of which had been granted,
Reduction, http://www.uspto.gov/patents/init_events/
and 328 of which were still awaiting a decision.
faqs_on_green_tech_20091222.pdf (last visited Feb-ruary 10, 2010).
In short, the scope of the Green Technologies Pilot Program is somewhat narrow because it only ap-
6 David Kappos, Patents Key to Fighting Climate
plies to pending applications in a limited number of
Change, Law360, January 12, 2010, http://www.
classifications. Inventors of eligible applications may
law360.com/articles/141988 (Law360 subscribers
find that the quicker examination period of the pilot
program offers them a real advantage in bringing their technologies to the world.
William A. Holtz Ph.D. is an associate in the Intellectual Property Department of Thompson Coburn LLP. Prior to beginning a career in law in 2005, Dr. Holtz was a research scientist for Monsanto Company. He has extensive experience in molecular cloning, RNA and DNA purification, cell culture, immunohistochemis-try, protein expression, protein purification, quantitative PCR, gene array analysis, and microscopy in assisting in the preparation and prosecution of biotechnology and pharmaceutical patent applications.
Dr. Holtz can be reached at 314-552-6512 or [email protected]
Federal Circuit “Messes with Texas”on Motions to Transfer By Jason M. Schwent
Because of its patent specific local rules and per-
Binder, there were witnesses in the plaintiff’s chosen
ceived “rocket docket,” the Eastern District of Texas
forum.5 Turning next to the Fifth Circuit’s “100 mile
is a popular forum for plaintiffs to file patent in-
rule,”6 which looks to the average distance to be trav-
fringement litigation. Motions to transfer are a fairly
elled for potential witnesses when the proposed trans-
common response by patent litigation defendants in
fer venue is more than 100 miles from the plaintiff’s
that district. It is also fairly common for such motions
choice, the Court believed that the rule should not
to be denied. Recent decisions of the Federal Circuit
be rigidly applied.7 Instead, the Federal Circuit noted
appear to indicate a greater willingness to grant these
that when witnesses must travel a significant distance,
motions. They also provide direction on several fac-
especially from a foreign country, requiring them to
tors cited by the district court judges for justifying their
travel to a different U.S. district did not significantly
denials of motions to transfer. In 2009, four denials of
increase their inconvenience.8 This is particularly
motions to transfer were appealed from the E.D. Texas
true when there are multiple witnesses located in the
to the Federal Circuit and in three of those cases, the
proposed transfer forum who would undoubtedly be
Federal Circuit held that clear error had been com-
inconvenienced should the case remain in the E.D.
One common thread among the cases where the
Another common argument made during the con-
Federal Circuit ordered a transfer was a lack of par-
sideration of motions to transfer is that the location
ties, witnesses, and evidence in the E.D. Texas. Most
of evidence is of less importance now that discovery
recently, this lack of connection to the E.D. Texas was
and production can be done electronically. Relying on
critical to Federal Circuit’s finding that the denial of a
Fifth Circuit law, which requires district courts to con-
motion to transfer was clear error in In re Nintendo.1
sider the location of evidence as part of the motion to
In Nintendo, none of the parties were incorporated
transfer analysis, the Genentech panel held that mini-
in Texas, no witnesses were located in Texas, and the
mizing the importance of document location (even
parties did not identify any evidence located in Texas.
where those documents are electronic) was improper
The Federal Circuit discussed that because four wit-
because it rendered superfluous the consideration of
nesses and the majority of the defendants’ evidence
were located in the Western District of Washington, it was a much more convenient and less costly forum
The Federal Circuit was equally unpersuaded by
to host the litigation and that it also had a much
conduct designed to manufacture a connection to
stronger particularized local interest in the litigation.2
the venue. In In re Hoffmann-La Roche, the plaintiff
The Federal Circuit also noted that the district court
sent some 75,000 pages of documents to its local
placed too much weight on the “plaintiff’s choice of
counsel’s offices in the E.D. Texas prior to filing suit.11
forum” factor. The Federal Circuit held that the plain-
The trial judge found that those documents were
tiff’s choice to bring the action in the E.D. Texas was
“Texas” documents and favored keeping the case in
due no additional weight during the transfer analysis
the E.D. Texas. The Federal Circuit saw things differ-
as plaintiff’s choice of forum formed the basis of plac-
ently. According to the Federal Circuit, the transfer of
ing the burden of demonstrating that there was good
those documents to local counsel’s office was clearly
cause for the transfer on the party seeking transfer.3
a litigation ploy designed to manufacture a connec-tion to the venue that could not defeat an otherwise
A common tactic for keeping litigation in the E.D.
Texas when witnesses are located throughout the country is to argue that Texas, being centrally located,
The case of In re Volkswagen of America was the lone
provides as convenient a location as any other dis-
case where the denial of transfer was upheld by the
trict, thus negating the good cause to transfer. When
Federal Circuit in 2009.13 In Volkswagen, the plaintiff
the Federal Circuit recently addressed this argument
had filed two patent infringement lawsuits in the E.D.
in In re Genentech, it was not persuaded that the
Texas against two different sets of defendants on the
central location of Texas warranted denying transfer.4
same patents. A third patent infringement litigation in-
In so finding, the Federal Circuit distinguished the
volving those same patents had also previously been
U.S. v. Binder case relied upon by plaintiff because, in
transferred to the E.D. Texas. When the defendants in
one action sought transfer to Michigan, the trial judge
5 Id. at 1344 (distinguishing U.S. v. Binder, 794 F.2d
analyzed the public and private convenience factors
1195 (7th Cir. 1986) because witnesses in Binder
and determined that the defendants failed to satisfy
were located in plaintiff’s chosen forum).
their burden of showing that transfer was warranted.14
6 As enunciated by the Fifth Circuit, the “100-mile
Interestingly, the judge’s decision on the motion to
rule” is as follows: “When the distance between an
transfer made no mention of the other litigations
existing venue for trial of a matter and a proposed
pending in the district. In contrast, on appeal, the
venue under § 1404(a) is more than 100 miles, the
Federal Circuit made no mention of the public and
factor of inconvenience to witnesses increases in
private convenience factors and instead focused
direct relationship to the additional distance to be
entirely on the other pending litigations in upholding
the decision to deny transfer. According to the Federal Circuit, “the existence of multiple lawsuits involving
7 See id. (“However, the ‘100-mile’ rule should not be
the same issues is a paramount consideration when
rigidly applied such that it creates the result presented
determining whether a transfer is in the interest of
8 See id. 9 See id. (“In contrast to the foreign witnesses, there
The Federal Circuit’s recent decisions provide some
are a substantial number of witnesses residing within
guidelines for presenting or responding to a motion to
the transferee venue who would be unnecessarily
transfer and the initial selection of a venue. First, it is
inconvenienced by having to travel away from home
imperative to determine whether some party, witness,
to testify in the Eastern District of Texas.”).
or evidence is located in the venue — even where witnesses and evidence are otherwise distributed
10 See id. (holding that “the court’s antiquated era
throughout the country. Second, transparent litiga-
argument was essentially rejected in [In re Volkswagen
tion tactics are unlikely to keep otherwise transferable
of Am., Inc., [545 F.3d 304, 316 (5th Cir. 2008)(en
cases in the district. Lastly, filing multiple lawsuits
banc)] because it would render this factor superflu-
against different sets of defendants on the same pat-
ents, may provide a basis for keeping litigation in the
11 In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed.
1 In re Nintendo Co., Ltd, 2009 WL 4842589 (Fed.
Id. at 1337 (“Thus, the assertion that these docu-
ments are ‘Texas’ documents is a fiction which ap-pears to [sic] have been created to manipulate the
13 In re Volkswagen of Am., Inc., 566 F.3d 1349 (Fed.
4 In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir.
Jason M. Schwent has extensive experience in litigating complex patent, trade-mark and copyright matters in administrative proceedings, state and federal courts. He has substantial experience in drafting and reviewing open source and proprie-tary software licenses, counseling clients regarding media licensing and technology transfer and advising clients about maximizing the protection for their intellectual property assets. Mr. Schwent also has significant experience representing and advis-ing established and emerging technology companies, multi-national manufacturing companies and large Fortune 500 corporations.
Mr. Schwent can be reached at 314-552-6291 or [email protected]
Lowering the Bar for Filing Declaratory Judgment ActionsTriggering Declaratory Judgment Jurisdiction By Pamela M. Miller
The recent Federal Circuit decision in Acceleron con-
has been attempting to determine how low the bar
tinues to lower the threshold for declaratory judgment
has been set.5 As the Federal Circuit noted in Accel-
jurisdiction, particularly when an accused infringer is
eron, “a lowered bar does not mean no bar at all.”6
Following the Supreme Court’s guidance in Med-
It is common for a patent owner to send a letter
Immune, the Federal Circuit in Acceleron reversed
to an accused infringer requesting that it stop an
the district court’s dismissal for lack of declaratory
alleged infringing activity. Although these types of
judgment jurisdiction.7 Acceleron, a patent hold-
letters can result in the patent owner and the accused
ing company, acquired a patent only months before
infringer reaching an agreement without litigation,
it sent a demand letter to Hewlett-Packard (“HP”)
sending such a letter is not without risk. Such letters
“call[ing] attention” to the patent as relevant to HP’s
may provide the accused infringer the right to file a
product line.8 Acceleron requested HP to respond
declaratory judgment action seeking a judgment that
within two weeks, provided HP agree that any infor-
the patent is invalid, unenforceable, or not infringed.
mation exchanged would not be used for litigation
These declaratory judgment actions are often consid-
and that no declaratory judgment jurisdiction existed.9
ered to be unfavorable to the patent owner because
HP responded to Acceleron’s letter by agreeing to not
they enable the accused infringer to choose the forum
file an action for a set period of time only if Accel-
of the litigation and may give the plaintiff the privilege
eron similarly agreed. Acceleron refused and again
of putting on its case first. For these reasons, such
imposed another deadline, noting this time that there
letters were usually drafted in a manner that would
was no basis for declaratory judgment jurisdiction.10
make it unlikely that the letter could be the basis for a
HP filed a declaratory judgment action that was dis-
The declaratory judgment playing field changed in
On appeal, the Federal Circuit viewed the facts
2007 with the Supreme Court’s decision in MedIm-
objectively under the totality of the circumstances to
mune, which rejected the Federal Circuit’s long-
find that the implicit assertion of Acceleron’s patent
standing test for determining whether an accused
rights in its demand letters was sufficient to establish
infringer has the right to file a declaratory judgment
declaratory judgment jurisdiction when coupled with
action.2 The old Federal Circuit test involved deter-
Acceleron’s conduct.12 The court concluded that
mining whether the accused infringer had a reason-
Acceleron’s actions could reasonably be inferred
able apprehension of imminent suit being brought
as demonstrating an intent to enforce those patent
by the patent owner. In MedImmune, the Supreme
rights.13 The lack of any express or explicit asser-
Court ruled that a broader “all circumstances” test
tion of infringement by Acceleron in its communica-
should be used to determine whether, under the facts
tions with HP was not fatal for the establishment of
alleged, “there is a substantial controversy, between
jurisdiction. Significant to the court’s decision was
parties having adverse legal interests, of sufficient
Acceleron’s status as a patent holding company, i.e.
immediacy and reality to warrant the issuance of a
a non-practicing entity that solely licenses its patents.
declaratory judgment.”3 The Court found declaratory
As the Federal Circuit noted, “without enforcement
judgment jurisdiction where the declaratory plaintiff
[Acceleron] receives no benefits from its patents.”14
was effectively coerced into paying royalties under
Also significant was the fact that Acceleron identified
a licensing agreement, noting that a patent licensee
its patent to and imposed deadlines upon HP.15
need not breach a license agreement to create a reasonable apprehension of suit before it can seek
The bar seems to have been significantly lowered
declaratory judgment.4 Unlike the Federal Circuit’s
as Acceleron made no claim of infringement and
previous test, a patent holder may no longer avoid a
demanded no license or royalty agreement from
declaratory judgment action by controlling its action
HP. Although mere knowledge of a patent owned by
so as to fall short of creating in the accused infringer
another or the perception that a patent poses a risk
a reasonable apprehension of imminent suit. After
of infringement is not enough, it is an open question
MedImmune, something less could suffice to confer
after Acceleron what action a patent owner may take
declaratory judgment jurisdiction. The Federal Circuit
without triggering declaratory judgment jurisdiction.
Patent owners, in general, and those that do not
v. Novartis Pharms. Corp., 482 F.3d 1330 (Fed. Cir.
practice the patent, in particular, should be aware
2007); San-Disk Corp. v. STMicroelectronics, Inc.,
that sending a letter informing someone of their pat-
ent even without alleging infringement or demanding
6 Acceleron, 587 F.3d at 1362.
license fees may be considered by a court to be suf-ficiently threatening to the recipient to trigger declara-
1 See Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358 (Fed. Cir. 2009).
2 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118
11 Id. at 1361 (citing Hewlett-Packard Co. v. Accel-eron, LLC, 601 F. Supp.2d 581 (D. Del. 2009)).
3 Id. at 127 (quoting Md. Cas. Co. v. Pac. Coal & Oil
5 See, e.g., Cat Tech LLC v. TubeMaster, Inc., 528
F.3d. 871 (Fed. Cir. 2008); Teva Pharms. USA, Inc.
Pamela M. Miller represents clients in actions involving patent and trademark infringement, unfair competition and media law issues. Ms. Miller has litigated a number of these matters, arguing objections before federal district judges, draft-ing pleadings and responsive briefs, preparing expert and fact witnesses and using state of the art technology to display exhibits and other documents. A former research and development chemist, Ms. Miller’s experience and in-depth techni-cal knowledge allow her to effectively assist clients in actions involving chemical patents and technology.
Ms. Miller can be reached at 314-552-6322 or [email protected]
Are Test Results Required to Show the Utility of an Incredible Pharmaceutical Invention? By Steven M. Ritchey and Charles P. Romano Ph.D.
To obtain a patent on an invention, the claimed
At issue in the ’318 Litigation were claims directed to
invention must have utility and the patent specifica-
methods of treating Alzheimer’s disease with gal-
tion must, among other things, enable a person of
antamine. In this case, there was no dispute as to
ordinary skill in the art to make and use the invention
the operability of the claimed methods of treating
without undue experimentation. The relationship of
Alzheimer’s. In fact, the drug was ultimately approved
the utility and enablement requirements is well-es-
by the Food and Drug Administration for use in treat-
tablished, since it is impossible to teach the use of an
ing Alzheimer’s. The patent is little more than a page
invention that is useless or inoperable.1 Thus, a patent
in length and contained a brief analysis of various pri-
specification that fails to convey an assertion of “cred-
or art references, a brief description of drug adminis-
ible utility” is invalid for a lack of enablement. Cred-
tration methods and doses, and a brief description of
ible utility was the focus of In re ’318 Patent Infringe-
a published “test that provides a good animal model
ment Litigation, a case in which a three-judge panel
for Alzheimer’s disease in humans.” Absent from the
of the Federal Circuit Court of Appeals affirmed a
patent were any working examples of the claimed
trial court decision that a patent on an operable and
methods. Working examples, even when conducted
otherwise enabled invention was invalid for a lack of
in cultured cells or other test systems, have long been
enablement because the specification lacked credible
deemed sufficient evidence of utility when there is a
utility at the time the patent application was filed.2
reasonable correlation between a compound’s activity and the claimed therapeutic use.3
In reaching its decision that the ’318 patent claims
even if such inferences could substitute for an explicit
were not enabled, the Federal Circuit seemed to re-
description of utility.”9 In summary, the court held that
gard as significant the fact that the specification did not
“the patent specification, even read in the light of the
disclose any in vitro experiments with living organisms
knowledge of those skilled in the art, does no more
or animal tests. Although animal testing results show-
than state a hypothesis and propose testing to deter-
ing galantamine was effective for treating Alzheimer’s
disease were eventually obtained by the inventor, they “required several months and considerable effort by
In addition to In re Brana, Judge Gajarsa addressed
researchers,” and were not available until about two
what he perceived to be the majority’s improper fusion
months after the patent issued.4 The court’s major-
of credible utility in the context of enablement with
ity continued to expound upon the importance of test
reduction to practice, which was not at issue: “Such a
results stating “[t]ypically, patent applications claim-
conflation risks the introduction of an actual reduction-
ing new methods of treatment are supported by test
to-practice requirement into patent law, contrary to
results” and “[w]e have held that results from animal
more than a century of settled precedent.”10
tests or in vitro experiments may be sufficient to satisfy the utility requirement.”5 Further, the majority noted
The full impact of In re ’318 Patent Infringement
that “‘[w]e perceive no insurmountable difficulty, under
Litigation remains to be seen. Ultimately, it may have
appropriate circumstances, in finding that the first link
limited applicability to other situations because of its
in the screening chain, in vitro testing, may establish a
particular facts — the case involved an unusually short
practical utility for the [pharmaceutical] compound in
specification with no working examples and the inven-
question’ in order for a patent to issue.”6
tor made statements during prosecution and litigation that perhaps could have been more precisely worded,
As mentioned above, test results were obtained shortly
which the majority seemed to consider important.11
after the patent issued but the trial court ruled that the
That said, it seems there are generally applicable
results could not be used to establish credible utility
lessons to take away from In re ’318 Patent Infringe-
necessary for enablement because they were not
ment Litigation for both patentees and challengers of
available at the time the application was filed. The
an issued patent. First, although additional evidence
majority of the appellate court looked to In re Brana
to support the scientific credibility of an asserted utility
to support the affirmance of the trial court’s decision,
may be submitted to the Patent Office during prosecu-
which apparently they believed stands for the proposi-
tion of the application to counter other inconsistent
tion that post-filing results are not to be considered
evidence of record or current scientific knowledge,12 a
when evaluating enablement.7 Judge Gajarsa, in his
court may not be able to consider such evidence and
dissent, disputed the majority’s characterization of
may be limited to considering what is disclosed in the
In re Brana and asserted that the Brana panel found
patent application itself.13 Therefore, if an invention is
post-filing test results to be acceptable for supporting
groundbreaking or contrary to current scientific knowl-
edge (e.g., an invention claiming to diagnose, treat, or cure a disease or condition known to be to dif-
The majority then addressed the plaintiff’s argument
ficult to treat such as a cancer or Alzheimer’s disease)
that utility may be established without testing the pro-
it is probably advisable to include disclosure in the
posed treatment in the claimed environment or a suf-
application sufficient to counter what contemporary
ficiently similar predictive environment — in this case
knowledge might otherwise suggest. Second, for such
by analytic reasoning. Although the majority noted
“incredible” inventions, the importance of including
that the U.S. Patent and Trademark Office’s Manual
working examples showing a reasonable correla-
of Patent Examining Procedure allows for arguments
tion between a compound’s activity and the claimed
or reasoning to establish an invention’s therapeutic
therapeutic results has been highlighted. Although the
utility, it also pointed out that those guidelines were
majority did not expressly hold that working examples
not binding on the court. The majority further noted
were required, the lack of them appeared to be a ma-
that there were no cases in which analysis was the
jor factor that led to their decision. Third, in situations
sole basis for establishing utility. Nonetheless, the
where it is not possible to provide a working example,
court considered the plaintiff’s testimonial evidence of
patent applicants may wish to expressly articulate the
the various “insights” that could be gleaned from the
novel and non-obvious insights they gained from the
prior art summarized in the specification. The major-
prior art that led to their claimed invention rather than
ity was unpersuaded because the insights weren’t
possibly being required to argue those insights may be
expressly disclosed in the specification and there “was
inferred from the patent specification. As suggested,
no evidence that someone skilled in the art would
the majority doubted whether an inference of utility
infer galantamine’s utility from the specification,
“could substitute for an explicit description of utility.”14
1 See In re Brana, 51 F.3d 1560 (Fed. Cir. 1995);
Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir.
11 See Id. at 1322, 1327 (“[The inventor] responded
2 In re ’318 Patent Infringement Litigation, 583 F.3d
to an obviousness rejection by explaining that,
because the brains of the animals in the studies
3 See In re Brana at 1565-66.
cited in the specification were ‘normal’ (rather than
4 In re ’318 Patent Infringement Litigation at 1322.
having ‘physiological changes’ similar to Alzheimer’s disease), the studies were conducted under ‘circum-
stances having no relevance to Alzheimer’s disease,’
6 Id. at 1325 (quoting Cross v. Iizuka, 753 F.2d 1040,
and that it thus would be ‘baseless’ to predict from
such studies that galantamine would be useful to treat Alzheimer’s disease.”); (“[W]hen I submitted this pat-
7 See Id. at 1325 (citing In re Brana at 1566).
ent, I certainly wasn’t sure, and a lot of other people
8 Id. at 1330 n.1 (citing In re Brana at 1567) (“The
weren’t sure that cholinesterase inhibitors[, a category
majority’s claim that ‘unlike the present case, the test-
of agents that includes galantamine,] would ever
ing [in Brana] was submitted to the PTO during pros-
ecution’ is misleading. The appeal in Brana was taken
12 Manual of Patent Examining Procedure § 2107.02.
from the Board of Patent Appeals . . . . And thus the Brana panel could not have intended to provide for a
13 See In re ’318 Patent Infringement Litigation at
distinction between the test results offered to support
the credible utility of an otherwise enabling disclosure
Steven M. Ritchey’s professional experience includes the preparation and pros-ecution of patent applications, both domestically and internationally. His experience includes a wide range of technical disciplines, including agriscience, biotechnology, organic chemistry, fuel cell catalytic technology, rechargeable battery technology, silicon wafer technology, nuclear medical materials, polymer technology, solder alloys and metal plating technology. Mr. Ritchey’s practice includes the negotiation and preparation of technology alliance and license agreements, as well as prepar-ing opinion letters regarding infringement, validity issues and freedom to operate.
Mr. Ritchey can be reached at 314-552-6232 or [email protected]
Charles P. Romano, Ph.D. is a Senior Patent Agent in Thompson Coburn LLP’s Intellectual Property Practice. A former Research Director at Monsanto and Ap-ath, Dr. Romano has over fourteen years of experience in the biotech industry. He is a named inventor on ten issued United States patents in molecular biology, agricultural biotechnology and pharmaceutical discovery and has published in peer-reviewed scientific journals such as Genes and Development, The Plant Cell, EMBO Journal and PNAS-USA. Key achievements include leadership of the team that identified the initial Monsanto YieldGard® Rootworm product and acquisition of more than $1 million in Small Business Innovation Research Awards from the National Institutes of Health. Dr. Romano prepares and prosecutes biotech and pharmaceutical patent applications before the US Patent and Trademark Office as a registered patent agent.
Dr. Romano can be reached at 314-552-6255 or [email protected]
This newsletter is intended for information only and should not be considered legal advice.
If you desire legal advice for a particular situation you should consult an attorney.
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MAMMOGRAM: STEREOTACTIC BREAST BIOPSY _______________________________________________________ Stereotactic breast biopsy uses a computer to locate an abnormality in the breast, usually seen on a mammogram, so that a very accurate sample can be taken. Before the procedure, you may take medication to reduce anxiety, such as ativan (1 mg the night before and 1 mg the morning of the
Informativo Nº: 0487 Período: 7 a 18 de novembro 2011. As notas aqui divulgadas foram colhidas nas sessões de julgamento e elaboradas pela Secretaria de Jurisprudência, não consistindo em repositórios oficiais da jurisprudência deste Tribunal. Primeira Seção REPETITIVO. EFICÁCIA EXECUTIVA. SENTENÇA. OBRIGAÇÃO. PAGAMENTO. QUANTIA CERTA. Trata-se de recurso julgado