Patent Prosecution
June 2013
June 13, 2013
Overview
• Welcome
• Quick Patent Prosecution Updates
• General Discussion
Myriad Case
• Facts:
– Myriad Genetics located and developed a test for the
BRCA1 & BRCA2 genetic mutations which substantially
increase the risk of breast and ovarian cancer
– Example Composition Claims
 Claim 1 “[a]n isolated DNA coding for a BRCA1 polypeptide,”
which has “the amino acid sequence set forth in SEQ ID
NO:2.” = DNA
 Claim 2 “[t]he isolated DNA of claim 1, wherein said DNA has
the nucleotide sequence set forth in SEQ ID NO:1.” SEQ ID
NO:1 = cDNA
• Held:
– DNA, an even isolated form- not patent eligible under 35
U.S.C. 101
– cDNA (Complementary DNA), which includes the same
protein-coding information found in the DNA but omits
segments that don’t code for proteins- may be patent
eligible because it is not naturally occurring.
Myriad Case
• Notes:
– No method claims- innovative method of
manipulating genes while searching for BRCA
gene = patent eligible
– Claims don’t involve new applications of
knowledge
– Did not consider patent eligibility of DNA in which
the nucleotides are altered
Myriad Case
• JUSTICE SCALIA, concurring in part and concurring
in the judgment.
I join the judgment of the Court, and all of its opinion
except Part I–A and some portions of the rest of the
opinion going into fine details of molecular biology. I
am unable to affirm those details on my own
knowledge or even my own belief. It suffices for me
to affirm, having studied the opinions below and the
expert briefs presented here, that the portion of DNA
isolated from its natural state sought to be patented is
identical to that portion of the DNA in its natural state;
and that complementary DNA (cDNA) is a synthetic
creation not normally present in nature.
Power of Attorney
• Having Powers of Attorneys kicked back from
the USPTO because the Applicant is not
designated on the ADS
• Solution: file ADS naming the Applicant along
with Power of Attorney documents
AIA Transition Applications
• ADS- AIA Statement
Secretary’s instructed to NOT check this box,
unless attorney specifically instructs otherwise.
Attorney’s responsibility to decide.
AIA Transition Applications
• How to fix if you accidentally checked the AIA
Statement box on the ADS
– Submit a corrected ADS with the box unchecked.
– Cover letter explaining that checking the box was
inadvertent.
Cooperative Patent Classification (CPC)
• Joint (Global) Classification System Based on
the European Classification system (ECLA)
– More granular than the International Patent
Classification (IPC) system
• Participants
– EPO
– USPTO
– Korean Patent Office (KIPO)
– China (SIPO)
Cooperative Patent Classification (CPC)
• Now Implemented in the USPTO (January 1,
2013)
– 2 Year Transition
 Newly filed US applications ("A" publications) will be
classified in the USPC and the CPC
 US patent grants ("B" publications) will be classified
in either the USPC or the USPC and the CPC
 CPC symbols will be printed on the front page, next
to the IPC and USPC symbols.
– By January 1, 2015- USPTO will exclusively
classify CPC (but will keep IPC)
Cooperative Patent Classification (CPC)
A01B33/08
Sections
A
Classes
Subclasses
01
IPC
Groups
Subgroups
B
33(/00)
CPC
08
Cooperative Patent Classification (CPC)
• Sections
– A: Human Necessities
– B: Operations and Transport
– C: Chemistry and Metallurgy
– D: Textiles
– E: Fixed Constructions
– F: Mechanical engineering
– G: Physics
– H: Electricity
Cooperative Patent Classification (CPC)
Cooperative Patent Classification (CPC)
• Working on implementing CPC for our subject
matter conflicts
– Converting US classes to CPC
• Searches
– Need to start using CPC
After Final Consideration Program Pilot 2.0
• Avoids the Expense of RCE’s
• Timing
– Responses to Final Office Actions Filed From
May 19, 2013 to September 30, 2013
• Requirements (NO FEE)
– Request for Consideration Under Pilot
(PTO/SB/434)
– Amendment to at least one independent claim
that does not broaden it
– Willing to participate in an interview
After Final Consideration Program Pilot 2.0
After Final Consideration Program Pilot 2.0
• What does the Examiner Get?
– Up to 3 Hours non-production time
– 10 day adjustment of docket management clock
• Outcome
– Examiner can deny request (file RCE)
– Allow the application
– Request interview
• Need to conduct interview within 10 days
– Otherwise back to filing RCE
After Final Consideration Program Pilot 2.0
• Results- it works
– Filed Request June 5, 2013
– Examiner called yesterday (June 12) requesting
a few minor changes for Notice of Allowance
– Saved client the expense and time of an RCE!
Patent Prosecution
June 2013
June 13, 2013