Medical IP Case Studies

Posted on February 3, 2015

The Hottest Issue for Healthcare IP in 2015:  Claims to Natural Materials

 

The Federal Circuit will grapple with the fallout from the high court's recent patent-eligibility ruling.  While the justices busy themselves with new areas of patent law, the Federal Circuit, the Patent Trial and Appeal Board and the district courts will deal with the impact of the high court's recent Myriad decision on patent eligibility.  Myriad Genetics was a case which created plenty of buzz and in return received lots of attention this past year.  Watch for fallout from the Myriad case in 2015.  

 

In the Myriad Genetics case, the Supreme Court invalidated gene patents which covered isolated DNA sequences by holding that merely isolating existing genes or matter found in nature does not constitute a patentable invention, since these materials are not inventive but instead produced by nature.

 

Since this decision, many courts have cited it to invalidate patents that only claim natural materials.  The Federal Circuit and the Patent Trial and Appeal Board will likely face multiple cases regarding the implications of this decision this year.

 

In light of the Supreme Court decision in Myriad and other cases, the USPTO issued new examination guidance regarding subject matter eligibility (what sort of subject matters are eligible to be patented).  The guidance was published in the Federal Register since December 16, 2014.  Focarino addressed the USPTO’s interpretation of subject matter eligibility and the change from previous examination guidance in this blog post.

 

Posted on February 2, 2015

 

Healthcare Trademarks Worth Noting

 

When it comes to Intellectual Property in the Healthcare Industry, it’s usually patent disputes that get most of the attention.  However, 2014 brought some interesting stories about trademarks in the industry, as well.  Here are a couple of examples:

 

  1. “TakeTen”  Adventist Health System of the West originally applied for registration of its “TakeTen” trademark for use with a 10-day residential health improvement program at its in-patient facility.  The trademark office refused to register the mark, citing similarity to Washington’s ILSI Center for Health Promotions’ “Take 10!” mark, which is used for promotional materials advocating 10 minutes of fitness activity daily.  The U.S. Court of Appeals for the Federal Circuit, however, said the Appeal Board’s refusal was not supported by the evidence, given the dissimilarities between the goods and services.
  2. “Nervup”  Abbott Healthcare Pvt Ltd. of Mumbai was in a dispute with an Indian pharmaceutical company, Jayaar Remedies over the “Nervup” trademark.  Jayaar Remedies used the mark since 1986.  Abbott Healthcare agreed to settle the dispute by paying Jayaar for the mark.  Abbott plans to use the mark in connection with a drug aimed at the prevention of neural tube defect and vitamin deficiency.

 

Posted on June 10, 2013

The U.S. Supreme Court Holds that Synthetic DNA Is Eligible for Patenting (Under the Right Circumstances), but Naturally Occurring DNA Is Not
 
In, Association for Molecular Pathology v. Myriad Genetics, 569 U.S. ___, Myriad Genetics had discovered two genes (generally speaking, a portion of a DNA strand in a human chromosome) that are effective indicators of heightened risk of cancer.  It consequently obtained several patents covering many aspects of this discovery and the way it found to exploit this discovery.  In these patents, there were patent claims on the segments of DNA that encode the genes themselves, synthetic replicas of these DNA sequences, and new applications of the information discovered about these genes.
 
On June 13, 2013, the Supreme Court reviewed some of these patent claims and held that a segment from a strand of naturally occurring DNA is not patent eligible because it is a product of nature and is not made patent eligible merely because it has been isolated.  By contrast, complementary DNA (or cDNA for short), which is man-made even though it is constructed from the natural  bonding properties of nucleotides using the cell’s naturally occurring mRNA, is patent eligible because it is synthetic.
 
The Court noted that AMP had not challenged Myriad Genetics patent claims that covered new applications of its information about the two Myriad-discovered genes and that these patent claims were therefore not affected by the Court’s decision.

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