The first half of 2010 has produced mixed decisions regarding claim language in bioscience patents. A sampling of these cases is summarized below.
These cases reinforce the need to develop a claiming strategy that avoids exclusions from patentability and takes advantage of favorable rules. These cases also illustrate the differences between the patent laws in the European Union and United States, and the need for different claim strategies in different jurisdictions. In many cases, claims drafted based on U.S. laws should be modified for filing in the EU. The patent attorneys in the Stinson Morrison Hecker Biosciences Group have the necessary experience and qualifications to develop patent strategies for bioscience inventions. Please contact Andrea Sellers in our Biosciences Group for more information.
A claim directed to a multi-step method, which when carried out is important to maintaining the life and health of the patient, may be excluded from patentability as a method of treatment by surgery if even one step is broad enough to read on an embodiment where the step is invasive, represents a substantial physical intervention, requires professional medical expertise, and entails a substantial health risk. However, such an embodiment may be disclaimed or the step may be omitted from the claim to avoid this exception to patentability. [MORE]
The EPO recently confirmed that a substance known to have utility in the treatment of one illness can be patented for use in a different treatment of the same illness, provided such treatment otherwise meets novelty and inventive requirements. This may include a new route of administration or dosage regimen. [MORE]
In March 2010, a federal district court from New York invalidated patents on genes associated with hereditary breast and ovarian cancer owned by Myriad Genetics and the University of Utah Research Foundation. The ruling marks the first time a U.S. court has found patents on genes unlawful and calls into question the validity of patents now held on approximately 2,000 human genes. The case is currently on appeal to the Federal Circuit, but a decision is not expected until next year. [MORE]