In the biotechnology industry, in which R&D costs can be substantial, companies must determine whether to pursue applications based on abstract ideas, laws of nature and natural phenomena—often a grey area for patent protection.
In the wake of recent Supreme Court decisions based on landmark Mayo Collaborative Services v. Prometheus Laboratories, Inc., Association for Molecular Pathology v. Myriad Genetics, Inc. and Alice Corp. v. CLS Bank International, the issue of subject matter eligibility has been called prominently into the spotlight.
Kate Gaudry, Leslie Grab and Tina Williams McKeon of Kilpatrick Townsend & Stockton LLP assess the recent decisions and resulting USPTO guidelines using LexisNexis® PatentAdvisor℠ to measure the effects on patent prosecution outcomes in a recent blog post on IP Watchdog. Read the article to discover:
- Prevalence of rejections under § 101 and how they affect prosecution
- Which art unit groups showed more substantial effects after Myriad
- The theory for the rise in number of office actions issued prior to issuance of notices of allowance for certain art units
PatentAdvisor analysis and statistics help you understand what is normal for your examiner or art unit with unprecedented visibility into the USPTO search database. Kate, Leslie and Tina were able to access and manipulate real, searchable data from the PatentAdvisor system to find USPTO allowances and rejections, and even identify the type of rejection in the office action.
The article can be accessed at https://www.ipwatchdog.com/2015/07/12/trends-in-subject-matter-eligibility-for-biotechnology-inventions/