Patently-O Bits and Bytes No. 303

  • Professor Lichtman and his students at UCLA reenact Bilski v. Kappos. [Download the MP3]
  • Jeremy Grushcow discusses “three need-to-know Canadian patent decisions that impact pharma, biotech and generic companies”: [LINK]
    • Lundbeck v. Ratiopharm (the Canadian Patent Act imposes a duty of candor).
    • Bayer v. Canada (the government will only list a formulation pharma patent in its patent register (i.e., Orange Book) if the patent claims include limits to “all of the approved medicinal ingredients” in the formulation).
    • Sanofi-Aventis v. Hospira (a disclaimer of scope may be filed after receipt of a notice of allegation).
  • Director Kappos discuses the “impact of KSR” on his blog: [LINK]

KSR has unquestionably refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham. Because the Supreme Court clarified that teaching-suggestion-motivation was not the sole test of obviousness, the Graham analysis is not to be carried out in a rigid manner. As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious.

Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications. For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution. By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.  

  • New lawsuits against Kappos (in his role as PTO director)
    • Cephalon France v. Kappos (patent term adjustment recalculation).
    • Komipharm International v. Kappos (demanding that it be recognized as the assignee of its patent rights).
    • Tolerx v. Kappos (patent term adjustment).
    • Centre National De La Recherche Scientifique v. Kappos (patent term adjustment).
    • Mosaid Tech. v. Kappos (patent term adjustment).