Patently-O Bits and Bytes No. 327

  • Supreme Court: My sense is that Ariad v. Eli Lilly has essentially no shot for Supreme Court review unless the Ariad can do a great job of convincing the court that the written description requirement as applied is (1) new and (2) is severely detrimental to the patenting of breakthrough inventions and discoveries.
  • Supreme Court: A decision in Bilski is expected in the next 6 weeks – perhaps as soon as March 30.
  • Upcoming events:

    • I am traveling the next 10 days or so, but have pre-written a set of interesting (in my view) blog posts.
    • On the 25th and 26th of March, I'll be speaking at the Miami-based IP Law Summit (then to Disney with the kids…).
    • April 27th, I'll be speaking in New York at the Corporate IP Counsel Summit
    • On April 30, I'll be speaking in Kansas City at a KCMBA IP law event.
    • On May 20, the Federal Circuit is hosting its annual conference with an all-star lineup.
    • Statute of Anne: Two competing conferences are being held on the 300th anniversary of the Statute of Anne (the first copyright statute). (If I were turning 300, I'd want at least two parties.) The first is on March 27 at Cardozo Law School in New York [Link] and the second is on April 9-10 at Berkeley Law School [Link]. Professors Peter Jaszi (American) and Daniel Gervais (Vanderbilt) will be speaking at both events.

10 thoughts on “Patently-O Bits and Bytes No. 327

  1. 10

    “Supreme Court: A decision in Bilski is expected in the next 6 weeks – perhaps as soon as March 30.”

    Why do you believe the Court will decide Bilski in these next 6 weeks (and possibly as soon as by next week)? I heard this from an independent source who claimed that it was only a hunch and had no basis for his prediction.

  2. 9

    If the BPAI gives you a new 101 rejection in their decision, you will get a new go around with the Examiner (for free, no RCE, no continuation required).

    I would still suggest calling the Examiner and trying to come to some type agreement as to what language would be proper to overcome the 101 rejection.

  3. 8

    “For the BPAI, it is much easier to call an Examiner to discuss how to overcome a 101 than it is to appeal a 101 rejection.”

    Unfortunately, the BPAI has sua sponte added 101 rejections in several appeals. Thus, they weren’t situations in which a 101 rejection was appealed.

  4. 7

    “For the BPAI, it is much easier to call an Examiner to discuss how to overcome a 101 than it is to appeal a 101 rejection.”

    Not so easy for applications appealed when useful, concrete, tangible test was good law and now sitting on appeal for 2+ years.

  5. 6

    For the BPAI, it is much easier to call an Examiner to discuss how to overcome a 101 than it is to appeal a 101 rejection.

  6. 5

    Steve – Search the BPAI decisions for “Bilski” You’ll notice less and less appeals with thorny 101 issues being decided in the past months.

    We wouldn’t want to have to ignore deal with more requests for rehearing than we already do…

  7. 3

    Anyone notice an above number of OA responses/ amendments not being filed in time to avoid incurring late fees?

    Waiting for the Bilski decision are they?

  8. 2

    “My sense is that Ariad v. Eli Lilly has essentially no shot for Supreme Court review unless the Ariad can do a great job of convincing the court that *pigs can fly*.”

    fixt.

  9. 1

    I am traveling the next 10 days or so, but have pre-written a set of interesting (in my view) blog posts.

    Did you pre-write your discussion of the Supreme Court’s Bilski decision? ;)

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