Berkheimer

Transient Phenotypes are Patent Eligible

I am very happy for our client, UAS Labs, for winning their appeal of, among other things, rejection for patent ineligibility under 35 U.S.C. §101. Ex parte Prakash et al., PTAB Appeal No. 2018-004374. This case presents an interesting question: is a bacterial cell with a transient phenotype that doesn’t result from genetic modification patent eligible? The Patent Trials and Appeal Board (“PTAB”) says yes.
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Breaking the Routine: New Guidance on Patent Eligibility

I’m kind of passionate about patent eligibility. A little weird, right? I guess when a single legal doctrine has such vast implications for the value of U.S. patents, it’s not surprising that a lot of ink is spilled on its behalf. Also, it’s an ongoing battle for some of my clients.

To date, applying the patent-eligibility law has been inconsistent at best. This kind of chaos is unsettling to inventors, companies, universities, and investors. Some recent caselaw, however, has motivated me to now spill a little more ink (albeit digital ink). In particular, the Federal Circuit and the U.S. Patent and Trademark Office have provided some guidance for applying Supreme Court precedents in determining whether certain claims are patent eligible. This may be helpful to patentees and patent applicants.
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