Scientists Simplifying Science

Author

Syam Anand

Syam Anand has 29 articles published.

Patenting Natural Products

in Sci-IP by

 

Several misconceptions exist when it comes to patenting natural products due to commonly held beliefs about them. Here are some key points that will help you understand whether an invention involving a natural product is patentable or not. The list will give you pointers in the right direction. It is important to note that we are only discussing patent eligibility i.e., whether your application is eligible to be considered for a patent in the first place. There are many other thresholds to overcome to get a patent granted.

Under patent eligibility, the first threshold is whether the claims in the patent application fall under any of the following four statutory categories: composition of matter, process, machine, and manufacture. They SHOULD fall into one of these categories, and most patent applications involving natural products often do. The second threshold is whether the claims in the application fall under judicial exceptions to the aforementioned four categories. These exceptions are laws of nature, natural phenomena, and abstract ideas. For inventions to be patentable, the claims SHOULD NOT fall under these exceptions.

For those unfamiliar with the term “claims”, they are a section in patent applications where the inventor states what exactly he/she is seeking a patent for. The rest of the application (termed “specification”) along with “figures” and an “abstract” provides supporting material for the claims that are made in an application. The main point to remember is that a patent is not just about the subject matter, a natural product in this case, but primarily the claimed subject matter, which is the matter that the inventors are seeking to exclude others from practicing. The claims ultimately determine patent eligibility.

One of the driving ideas behind creating patent eligible subject matter is to grant patent rights ONLY if the claims in the application are NOT so broad that they prevent everyone else from making further progress in that area. This is why natural phenomenon/laws, abstract ideas and mathematical equations are not patentable. The aforementioned exceptions’ list is more expansive and intends to ensure that the basic tools of scientific and technological work are not patented. When claims in a patent application are directed to one of the judicial exceptions, the threshold to overcome is whether the claim as a whole, amounts to significantly more than the exception itself. In other words, whether an inventive concept is present or not. Along similar lines, the assessment of patent eligibility of natural or nature-based products are performed by comparing what is covered in the claims to their naturally occurring counterparts, to determine if they have markedly different characteristics than their natural counterparts or not. The presence of markedly different characteristics is considered as evidence for the presence of inventive concept(s).

Natural products are NOT patent eligible if

  1. The claims are directed to their composition and they are identical to their natural counterparts.
  2. The claims are directed to their compositions although the inventor managed to synthesize them. This is because the composition remains the same whether the inventor isolated it or synthesized it.
  3. The claims are directed to formulations that merely combine two (or more) natural (or synthetic) products where they simply carry out their own actions without changing the property of one or the other or does not have an unexpected outcome as a result of combining them. In other words, they do not have markedly different characteristics than their natural counterparts.
  4. The claims are directed to a product made by a process, but the product is not different from its natural counterpart.
  5. The claims are directed to natural processes (Metabolic pathways, Signaling pathways) or natural correlations (insulin-sugar).

Natural products ARE patent eligible if

  1. The claims are directed to the composition that has been modified, for example, by changing the structure of the product to one that does not exist in nature, so that it is different from its natural counterpart (see how the product is not “natural” anymore).
  2. The claims are directed towards how to make/manufacture/synthesize them (see how the claims are not for the composition, but are directed towards making or manufacturing them, and the category shifts from composition to process/method or manufacture). Now, the protection being sought is not for the naturally occurring product itself, but for a new process that has been invented to synthesize it.
  3. The claims are directed to one or more methods for isolating them from their natural environment, for example, purification of a naturally occurring enzyme, drug etc. (see how the claims are now for the process and not the natural product itself).
  4. The claims are directed to their use. For example, CRISPR that exists naturally in some bacteria can be patented if you are NOT trying to patent CRISPR itself, but rather its use for doing the same (not exactly the same though; remember the characteristics have to be markedly different, so just moving from one species to another does not suffice, if there is a natural counterpart) thing in another environment or a different thing in the same environment (notice how the inventive process starts playing a role, making it different from its natural product or process counterpart). Methods patents like CRISPR are examples for this class of patent eligible subject matter (A method for editing genes in prokaryotes OR eukaryotes using CRISPR). Such patents may also include new compositions (for example, alterations in nucleic acid/protein sequence) that accomplish these new tasks.
  5. The claims are directed to formulations containing them and the formulations claimed have markedly different characteristics from a naturally occurring one or from one with a potential to occur naturally or in another formulation already known. For example, formulations that add desirable properties to a natural product will be patent eligible. An example that won’t make the cut is the formulation of a natural product in water, as it is very likely to exist in nature.
  6. The claims are directed to a product made by a process, and the product is different from its natural counterpart.
  7. The claims are directed to methods that modify or monitor natural processes, natural correlations, or natural laws, as they are likely to involve an inventive concept. Take CRISPR patents for example: all of them are for inventive concepts that exploit CRISPR/Cas9’s unique properties for something that was not obvious/natural.

Since there are many wrinkles to be carefully analyzed, getting a good patent professional involved right from the start would be a great idea for maximizing your chances of obtaining a patent for a natural product-based invention.

In essence, the key is what exactly does the patent application claim.

 

About the author

Dr. Syam Anand, PhD (Indian Institute of Science, IISc; Post doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years of experience in diverse areas of science with domain knowledge in Life Sciences and Intellectual Property. Dr.Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems, and making common people curious and interested in understanding their worlds.

 

Editors: Arunima Singh, PhD edited, and Paurvi Shinde, PhD proofread the article.

Arunima obtained her PhD from the University of Georgia, and is currently a postdoctoral researcher at the New York University. A computational structural biologist by training, she enjoys traveling, reading, and the process of mastering new cuisines in her spare time. Her motivation to move to New York was to be a part of this rich scientific, cultural, and social hub.

Paurvi Shinde is a recent PhD, in Biomedical Sciences (Immunology) with expertise in T cell activation pathways. She currently works as a Postdoctoral Fellow at Bloodworks Northwest in Seattle, where she studies the mechanism of how alloantibodies are formed against ‘non-ABO Red Blood Cell antigens’. Apart from science, she loves editing scientific articles to convey the message behind it, in a clear and concise form.

Conflict of interest: The author is a US patent agent

Image credit: pixabay.com


The contents of Club SciWri are the copyright of PhD Career Support Group for STEM PhDs (A US Non-Profit 501(c)3, PhDCSG is an initiative of the alumni of the Indian Institute of Science, Bangalore. The primary aim of this group is to build a NETWORK among scientists, engineers and entrepreneurs).

This work by Club SciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License


The Patent Chronicle

in Sci-IP by

August 29, 2017: The Patent Chronicle is your go to destination for a capsule dose on the hottest happenings in the patent world. It is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. In this section,  Syam has clinically dissected out every news on the decision, the reason and the impact to help you comprehend the full story in a nutshell. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

Let’s crank-up the patent engine for the latest happenings…

via GIPHY

 

 

FEDERAL TRADE COMMISSION SCORES WIN TO STOP AN INVENTION-PROMOTION SCAM

Decision: The US district court of Florida granted an injunction sought by the Federal Trade Commission (FTC) that extended a freeze on the assents of World Patent Marketing Inc. (WPM).

Reason: FTC had stepped in to stop WPM from a scam that cheated inventors of around 26 million USD. WPM had misrepresented facts to mislead customers with false success stories and promises to patent and market inventions. Further, they threatened consumers with criminal prosecution if they complained about their dissatisfaction with WPM’s services.

Impact: In March 2017, FTC had scored a win to freeze WPM’s assets. With the current win, the freeze has been extended. It takes FTC one step closer to return the money from WPM to its dissatisfied customers. WPM is one of the several companies that operate by promising patenting and marketing of inventions by requesting inventors to submit regular payments. News such as this, will not only put an end to this exploitation by WPM, but also open the eyes of inventors and innovators, when they seek such services.

Read more

To know the details of the scam click here

 

PFIZER’S PNEUMONIA VACCINE INDIA PATENT SHOWS TWO SIDES OF A BAD COIN

Decision: Indian Patent Office granted a patent to Pfizer’s pneumonia vaccine Prevenar 13 that is valid till 2026.

Background: Prevenar 13, as the name indicates is effective against 13 pneumococcal strains. Pneumococcus, the responsible bug, has demonstrated the ability to evolve and cause infections in spite of widespread use of vaccines against the bug. This had pushed vaccine developers to keep adding more and more antigens to the vaccines in their efforts to obtain effective herd immunity. However, it appears that vaccination against Pneumococcal pneumonia is a loosing battle due to the strain variability of the bug. WHO had advised antibiotic treatment of Pneumococcal pneumonia as a more economically viable option since the bugs are largely sensitive to antibiotics.

Impact: The debate in India about the impact of the vaccine patent is on multiple fronts. First, there is the accessibility issue, as India is not eligible for GAVI (Global Alliance for Vaccines and Immunisation) because its per capita GDP exceeds the 1500$ cut off. This makes the vaccine expensive for India. Second, there is the issue of wrong priority if the Indian administration goes ahead with its intention to pursue procurement and distribution of the vaccine through its government medical centers instead of following WHO’s recommendation. Third, there is a local manufacturing issue, as India has a vibrant Pharmaceutical manufacturing industry that thrives on producing cheaper drugs and vaccines that puts them in direct competition with many multinational pharmaceutical giants. Fourth, there is fear among aid groups that the patent will act as a block for cheaper solutions although one wonders why they are not focusing more on the cheaper alternatives to vaccines that already exist for Pneumococcal pneumonia.

Read more

To know about antibiotics vs pneumonia vaccine click here

 

REGENERON PATENT INVALIDATED FOR INEQUITABLE CONDUCT

Decision: A Federal Circuit court decided that references withheld by Regeneron when filing the patent was “but-for” material, not cumulative and with the specific intent to deceive the PTO.

Background: Regeneron had sued Merus for infringement on a patent U.S. Patent No. 8,502,018. Merus appealed that the patent is unenforceable because of inequitable conduct that happened during the prosecution of the patent before USPTO. Merus alleged that Regeneron’s attorney withheld four references that they had an obligation to disclose to the PTO when they submitted the application for examination. USPTO rules state that representatives (in this case attorneys) have a duty to disclose all material known to them that are material to patentability of the invention covered in an application. Failure to do so is considered inequitable conduct.

Impact: The decision makes the Regeneron patent unenforceable. In inequitable conduct, a specific intent to deceive is a difficult thing to prove in the absence of direct evidence showing such intent. However, it appears that in this case the Court decided that there was specific intent based on a “pattern of misconduct” during litigation. Normally, such intent is sought among actions that occurred during prosecution of the application- the time during which attorneys submit documents to the PTO. It is likely that failure to provide documents and follow the directives of the court during litigation may soon be construed as proof for specific intent to deceive in other cases as well.

Read more

 

Infographically speaking….

 

Proprietary Humor

By Mimi and Eunice

 

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Pixabay

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

 

The Patent Chronicle

in Sci-IP by

August 1, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

Let’s roll the dice for the latest happenings…

via GIPHY

Patent-free life saving drugs from Drugs for Neglected Disease Initiative (DNDI)

The 1990 Nobel Prize for Doctors without Borders provided the seed money for DNDI. But that was not sufficient for DNDI to realize its goal of manufacturing and distributing drugs for diseases of the poor. Bernard Pécoul, a physician associated with Doctors without Borders embarked on a journey to realize this dream. Delinking the usual norms and practices of drugs and profitability, Pécoul lead DNDI to a pharma company for the poor. DNDI now delivers patent-free drugs to neglected diseases that would not have been possible with complete reliance on traditional pharmaceutical industry.

Read more

 

 

A life-saving patent that Volvo never licensed

US Patent 3043625 to Nils Bohlin reduced the fatalities from car collisions by almost 50%. Volvo, with whom Bohlin was employed was also a leader in many safety features that we use in cars even today. But little known is the fact that Volvo allowed all car manufacturers to use their patented three-point harness system without requiring a license. Thank Bohlin and Volvo for the “click it”.

Read more

 

Exon-skipping patent settlement by Sarepta

Decision: Biomarin Pharmaceutical Inc. and Sarepta Therapeutics signed a license providing Sarepta with exclusive rights to Biomarin’s exon-skipping products.

Reason: Worldwide patent battles had pitched the two companies against one another on the use of exon-skipping products for DMD.

Impact: Both Biomarin and Sarepta come out as winners with agreements on royalties, licensing fees and profit sharing. They are also a sign of mutual cooperation that will benefit the end-users. As a result of these agreements, both companies get credit for their innovation, which will allow them to focus on R&D rather than litigation. It also consolidates their position as a global leader in exon-skipping products for diseases like DMD.

Read more

 

Stryker strikes triple damages

Decision: US district judge ruled that Zimmer Biomet infringed Stryker’s patent for a pulsed lavage system used in surgeries. Further, the court tripled the damages for infringement for egregious behavior.

Reason: The infringement suit was filed in 2010 in Kalamazoo and related to three patents covering Stryker’s Pulsavac. The litigation also took place in the federal circuit with mixed results for Stryker. The judge in Michigan however felt that Zimmer did nothing to stop the infringing activity or mitigate damages at any point during the litigation. Further, the judge also felt that the Zimmer refused to turn over the evidence in a “willful and egregious” manner.

Impact: As a result of the judgment Zimmer owes Stryker 248.7 million dollars. It is a good time to be associated with Stryker.

Read more

 

Amphastar gets breather in blood thinner war

Decision: The US District court jury in Boston ruled that a Momenta patent used to test an ingredient in generic Lovenox is invalid. The jury also sided with Amphastar on whether Momenta had waived its rights to enforce the patent.

Reason:  Momenta and Novartis had sued Amphastar close to a billion dollars in lost sales for using their patented test without permission in the manufacture of their generic version.

Impact: Lovenox has a long history of litigation. The legal war will continue on multiple fronts with Amphastar filing an antitrust motion against Momenta and Momenta planning for appeals.

Read more

Infographically speaking….

Seat Belts Save Lives

From Visually.

Proprietary Humor

Source: Mimi and Eunice

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Pixabay

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

 

The Patent Chronicle

in Sci-IP by

July 11, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

 

via GIPHY

 

Broad submits CRISPR patents to MPEG LA Pool

 

Decision: Broad Institute and its collaborators submitted all their CRISPR patents to MPEG LA LLC, a Colorado firm that specializes in creation of patent pools for licensing.

Impact: The submission of Broad CRISPR patents is a sign that the Institute and its collaborators are willing to make licensing of the technology easier for potential end-users and also share the proceeds from CRISPR technology. It is not clear whether UC Berkeley that enjoyed a wining streak in CRISPR patents in various national patent offices is also planning to join the pool. If it does, it will prevent potential users from having to obtain separate licenses from various entities that own the rights to the technology.

Read more

 

Canada rejects the Promise Doctrine

Decision: A Canadian Supreme Court ruled that the Promise doctrine that may be used to invalidate a patent if it does not do everything it promises it will do, goes too far.

Reason: Apotex had sought to invalidate an Astra Zeneca patent using the doctrine as an arguing point. The court rejected Apotex’s argument and held that a “scintilla of utility” is sufficient and further that a single-use related to the subject matter was sufficient. In other words, not everything that is claimed has to work for a patent to be valid, just one would suffice to clear the utility threshold.

Impact: The ruling is a boon to patent owners. It makes Canadian IP law more predictable and will reduce litigations in Canada stemming from the controversial doctrine that put a higher threshold for Canadian patents vs. patents in the rest of the world. Canada was an outlier in this respect and cost patent owners. The doctrine was also a major irritant for US-Canada trade talks. Earlier, NAFTA had refused to intervene in a matter related to the doctrine brought in front of the agency by Eli Lily. The ruling clears the air for such cases in front of NAFTA too.

Read more

 

Small firm gets court ruling that stops Google from showing infringing products in search results

Decision: The Supreme Court of Canada upheld a ruling by a lower court that ordered Google to remove the website of a company that sold infringing products on its website.

Reason: Equustek had sued Datalink for infringement and won. Equustek also had an injunction against Google to remove Datalink websites from global search results. Google did not completely stop Datalink from appearing in the searches. Google argued that the injunction violated freedom of expression. The court held that Google actions were “determinative” in causing harm to Equustek. The court made it clear that freedom of expression does not require facilitation of the unlawful sale of goods, and violation of several court orders.

Impact: The ruling could set an international precedent in protecting intellectual property rights as it directly lays out the responsibilities of service providers. It will force them to take affirmative steps to prevent unlawful sales that affect rightful owners of IP. Organizations involved in civil liberties and freedom of expression rights are afraid that the ruling can set a wrong precedent.

Read more

 

Abbvie’s Humira patent troubles increase

Decision: In an intra partes review brought by Boehringer Ingelheim, the USPTO’s PTAB invalidated five claims in a key Abbvie patent that covered Humira.

Reason: PTAB found that the claims are obvious in light of various combinations of publications that predate the patent.

Impact: Abbvie will face big competition from biosimilars who continue to score wins against Humira. Coherus Biosciences, Samsung Bioepis, Biogen, and Amgen are continuing to chip away at Humira’s exclusivity and patent rights in many parts of the world. As Humira is a major revenue source for Abbvie (60%), Abbvie is looking to diversify.

Read more

Access the key patent here

 

Infographically speaking…..

Where

From Visually.

Proprietary Humor

 

Source: Mimi and Eunice

 

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Pixabay

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

The Patent Chronicle

in Sci-IP by

June 27, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

via GIPHY

 

China gives CRISPR patent to UC Berkeley

Decision: China’s State Intellectual Property Office granted Doudna and Charpentier the CRISPR patent.

Impact: UC Berkeley’s patent on CRISPR has broader claims compared one of the Broad Institute’s patents that claimed a “victory” in an infringement battle at the USPTO. UC Berkeley’s application was also granted in the EU and UK. These wins are good for Doudna’s CRISPR startups, Intellia and Caribou Life Sciences and bad for Editas, which has licensed CRISPR from Broad Institute.

Read more

US Supreme Court to look at Patent Review process

Decision: The US Supreme Court has taken up an appeal by a Texas company that essentially questions the Patent Office’s right to cancel patents it previously granted.

Reason: Texas-based Oil States International Inc had previously lost a case in a lower court where it argued that patent owners have a right to a jury trial, as patents are private property and USPTO’s inter partes review process does not give them their constitutional right, as they are decided by administrative judges. The Supreme Court had earlier ruled that owners of private property who have their rights revoked have a right to a jury trial.

Impact: If the Supreme Court sides with Oil States International, it will directly question the constitutionality of the PTAB review procedure and also the larger question whether patents are private property.

Read more

Patent activity tied to growth

Source: The Rise of American Ingenuity: Innovation and Inventors of the Golden Age

Ufuk Akcigit, John Grigsby, Tom Nicholas, National Bureau of Economic Research Working Paper No. 23047, January 2017

Trends:

  • Strong positive correlation between patent activity and GDP growth.
  • Small numbers of inventors (0.02 per cent of the population) have high impact on their communities.
  • Higher urbanization tended to have more innovation probably by clustering people and supporting interaction of people and ideas.
  • Access to capital supported innovation, showcasing a need for strong capital economy for patent activity and innovation.
  • Geographical isolation negatively correlated with patent activity.
  • Positive correlation between patent activity and upward social mobility.

Read more

 

STRONGER Patents Act Introduced in the US senate

Decision: Senators Chris Coons (Democrat; Delaware) and Tom Cotton (Republican; Arkansas) introduced the Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act in the US Senate.
Background: Two years back, an earlier version of the Act (STRONG, without the ER) that was introduced by Sen. Coons failed to pass in the Senate. The new bill is a revised version of the old one. It is apparently aimed at strengthening the patent system by a set of proposed legislation that will gut many of the provisions in America Invents Act (AIA).
Impact: The US Patent Office with the help of AIA has been pursuing to strengthen the patent system by strengthening procedures that gets rid of low quality patents. The STRONGER Patents Act wants to reverse that by making it difficult to challenge the validity of patents in the USPTO using those procedures. The proposed legislation is unlikely to go anywhere. However, it throws light on how a section of America views the patent system and where and how the validity of patents can be questioned. One major focus of the proposed legislation is the post-grant review procedures in the USPTO.

Read more

Cleveland Clinic’s cardiovascular disease diagnostic patent invalidation remains

Decision The federal circuit supported the District Court of Ohio’s ruling invalidating Cleveland Clinic’s diagnostic patents.

Background: Cleveland Clinic had brought an infringement suit against True Health Diagnostics LLC on the Clinic’s cardiovascular disease diagnostic test patents. The Ohio court had used the US Supreme Court’s 2012 famed Mayo decision that natural laws are not patentable to invalidate the Clinic’s patents. In essence patents that cover nothing more than the natural correlation become invalid in light of Mayo. In this case, the Ohio court ruled that the Clinic’s patents covered nothing more than a natural correlation between an enzyme and an increased risk of cardiovascular disease.

Impact: The US Supreme Court’s Mayo decision and its impact on diagnostic patents are very familiar to people familiar with intellectual property law. The latest decision on the Clinic’s patent invalidation is a case worth reading and understanding for people who are in the business of developing diagnostic tools and understanding the distinction between innovation and patentability.

Read more

Infographically speaking………

Heart Disease 101: The Basics

 

Infographic From Visually.

Proprietary humor by Mimi and Eunice

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Featured image source: Pixabay

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

Confluence of Intellect: The 2017 IISc Alumni Meet (Washington, DC)

in Sci-Pourri by

Indian Institute of Science Association of Alumni North America (IISc AANA) held its 3rd Conference on Emerging Themes in Science, Engineering and Technology on June 4th, 2017 in Washington, D.C. The conference featured plenary and invited talks on cognitive healthcare, space exploration, alternative careers, entrepreneurship, academic and industrial leadership, and a panel discussion on career options.

More than a hundred alumni attended the conference, including the present Director of IISc, Prof. Anurag Kumar. The alumni included those who graduated way back in the 1960s, several recent graduates and everyone in between. Motivation, ambition and eagerness to network, learn from each other, and dedication to make lasting contributions were palpable from each and every one attending the Conference.

Dr. Sunil Kumar, Provost and Senior Vice-President of Academic Affairs at John Hopkins University gave the introductory remarks.

Three exceptional talks followed.

The first one was given by Dr. Eric Brown, Director of Foundational Intelligence for IBM Watson Health on “Watson in Healthcare”. Dr. Brown’s talk focussing on the role of IBM Watson in Healthcare neatly brought out the impact Watson will have on the availability of large curated data sets of patient records for clinical practice. The role could be similar to that played by Thomson Innovation that made curated Patent and patent application data sets available for IP professionals in a scale that was unprecedented.

The second one was given by Dr. James Green, Director, Planetary Science Division, NASA on “Space exploration”. Dr. Green’s talk elegantly presented the advances NASA is making in understanding the solar system and evolution of planets. Introducing Dr. Green, Dr. Murthy Gudipati from NASA compared the role played by Caltech and JPL in NASA’s pursuit of its goals to that of IISc in Indian Space Research Organization’s (ISRO) pursuit of its ambitions. He also remarked about IISc’s effort to start a Center for Planetary Science, a welcome sign that India is preparing to play another lead role in space exploration. 

The third one was given by Dr. Katepalli Sreenivasan, Dean of NYU Tandon School of Engineering on “International Science”. The talks were followed by question and answer sessions.

The IISc Director presented a brief history of the Institute and its present activities, notable among which were the expansion of infrastructure, academic and research activities within the present campus, the acquisition of a huge new campus (1500 acres) at Chelekkare, located around 225 kms from the Bangalore campus, and funding expansion beyond traditional government funding support.

The latter included several industry tie-ups as well as support from other organizations and foundations as well as individuals for student fellowships, faculty support, travel support, research support and establishment of dedicated research centers such as the Center for Brain Research supported by Pratiksha Trust with a 20 million dollar endowment. The Director, Prof. Anurag Kumar, also discussed the activities of IISc’s Office of Development and Alumni Affairs with its stated aim to build a vibrant community of alumni, friends, partners and well-wishers who volunteer to support the Institute’s mission.

ODAA has been successful in bringing in support worth several million dollars to various research programs such as Brain Research, Environmental Research and Cyber Physical Systems. The Director also talked about IISc’s Office of Career Counseling and Placement. The current Chairman of ODAA, Prof. Govindan Rangarajan, was in attendance.

Dr. Sreenivasan, presented an engaging critique of IISc’s research activities as it relates to international science, focusing on the steps IISc management has to make to have the Institute get noticed as a leader in international scientific arena. He pointed out that the international stature of IISc is not commensurate with its national status and working on solutions to problems that India faces and focusing on a few Grand challenges will engage international collaborations at the highest levels. He noted and welcomed several new initiatives that the present Director presented earlier, specifically the new initiative of a tenure track program for IISc faculties and the efforts to shore up ODAA to seek and maintain funding outside traditional sources that IISc is familiar with. He encouraged the management to sort out a mandate for the institute from the many choices it had such as instructional and research. He wondered whether the IISc is spreading itself too thin with the breadth and nature of its current activities. He suggested that IISc focus its resources on a few research programs with Grand Challenges and also further develop ODAA to improve the perception of the Institute in other spheres. He suggested that the institute should aim to procure 20% of its funding from private sources as done by many of the leading research institutes/universities in the US. He also pointed out that IISc is yet to have a woman director.

The post-lunch session featured talks by Dr. Srikumar Chellappan (H. Lee Moffitt Cancer Center and Research Institute in Tampa, Florida, titled “Biology and Treatment of Human Cancer: New Insights and Old Challenges”), Dr. Girish Nallur (Connecticut Innovations, titled “Innovating in the age of disruption – spotting, seizing and internalizing emerging opportunities”), Dr. Jairaj Acharya (NCI, titled “What model organism studies have taught us about bioactive lipids”, and Dr. Sunil Kumar (Provost, Johns Hopkins University titled “Preparing to lead in the next decade”). Dr. Sunil Kumar in particular engaged the audience with his unique style and talents. Dr. Anand Swaroop from NIH introduced the speakers.

The Panelists and Participants

The Conference ended with a panel discussion on Career Options. The panelists, Dr. Syam Anand (Founder and US patent agent, Mainline Intellectual Property LLC, Philadelphia), Dr. Sankhavaram R. Panini (Professor of Biochemistry & Genetics, Touro College of Osteopathic Medicine, Middletown, NY), Dr. Durga Paruchuri (MCCO Account Manager Genentech Inc.), Dr. Hiriyana, Kelaginamane (Patent Examiner, USPTO), and Dr. Haren Vasavada (VP, Optherion, Connecticut) were led by Dr. Rita Khanna (Legal Counsel and Business Development Professional at International Technology Transfer Management, Inc., Washington DC). The discussion evolved into a candid, vibrant, and engaging one with the young and the old in the panel as well as the audience sharing their experience and wisdom. The discussion covered the importance of individual initiative, passion to excel, understanding financial and legal challenges right at the beginning of becoming an entrepreneur, protecting intellectual property right from conception, the role of mentoring, and the role of networking.

IISc AANA’s senior alumni encouraged youngsters to take initiative and get engaged in AANA’s activities as it expands to the east coast.

 

Historically and Infographically speaking…..

 

& Humorously Laapataa on IISc Campus

Cartoon By Sujit Kumar Chakrabarti

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Vikas Navratna

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

 

 

 

The Patent Chronicle

in Sci-IP by

 June 13, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

via GIPHY

 

USPTO director quits

Decision: Michelle Lee, director of USPTO for since 2015 submitted her resignation.

Reason: There appeared to be a disconnect between Obama-appointed Lee and the Trump administration.

Impact: Ms. Lee, had brought about many reforms in USPTO, the most prominent of which was the effectiveness with which USPTO invalidated of low quality patents. As many as one in four patents ended got invalidated in the USPTO through post-grant review processes in the PTAB. Lee had the overwhelming support of technology companies as a result of the reforms under her direction that impacted patent quality in a good way. Following Lee’s resignation, Joseph Matal was appointed acting USPTO director. Matal was the principal staff drafter of the America Invents Act. He held the Associate Solicitor position at the USPTO before being appointed the acting Director. If confirmed for the top position at the USPTO, he is a well accomplished and well poised to head USPTO.

Read more

Disney wants to block home 3D printing of trademarked figurines

Decision: Disney is seeking to patent technology that will block 3D printing of its trademarked figures such as Mickey mouse and Elsa by individuals.

Reason: Currently scanning and home 3D printing of Disney figurines cannot be prevented although Disney strictly enforces its IP rights wherever it can.

Impact: The technology as described appears to be dependent on incorporation of certain materials that will prevent scanning of the figurines. Therefore, its usefulness will be very limited on figurines that are already out there. However, scanning and printing of future Disney figurines could certainly be prevented by such technology.

Read more

 

Religion bound to impact certain patents in India

Background: The current administration in India has enacted a ban on sale of cattle for slaughter. It has affected sale and transport of cattle within and across state boundaries. The ruling party holds that cow is a holy animal for Hindus. Many people who are in the cattle, farm and meat trade have been hurt and many lives lost at the hands of religious mobs and armies formed to protect cows.

Affected technology: Pending patents that cover improved and more humane methods to slaughter animals. Although the claims in these patents do not specifically mention cows, the interpretation is inclusive of cows.
Impact: Depends on how broad the ban on animal slaughter will become in the near future. If it is restricted to cattle, specifically cows, modifying claims to exclude cows will help the pending applications get around the barrier.

Read more

Regeneron vs Amgen anti-cholesterol drug patent war

Decision: Pending at the federal appeals court.
Background: Amgen Inc. requested the court to block Sanofi and Regeneron’s sale of anti-cholesterol drug, Praluent, on patent infringement grounds. Sanofi and Regeneron on the other hand are attempting to invalidate Amgen’s patents that cover PCSK9 inhibitors, on the grounds that they improperly claim a broad monopoly. Amgen enjoyed a jury-awarded injunction on the sale of Praluent for 12 years until Sanofi and Regeneron’s appeal.
Impact: Questions raised by the court and arguments presented so far appear to hint that the court may side with Sanofi and Regeneron. Irrespective of which party wins, Sanofi and Regeneron will be the real winners in the case as the damages for lost-profits and continuing infringement will be only a tiny fraction of Sanofi’s profits from sale of Praluent. This is because Amgen’s cholesterol drug Repatha serves a different patient population. Sanofi earns around 100 million USD annually from Praulent sales. A worrying aspect of injunctions against drug manufacturers is their adverse impact on gathering information on the effects of these drugs on true end points (cardiovascular events in this case) versus surrogate endpoints (lowering LDL cholesterol in this case). The PCSK9 drugs were approved on the basis of a surrogate endpoint on the condition that their sponsors continue studying their true endpoints.

Read more here and here

 

Infographically speaking…..

 

The Disney Empire

From Visually. (Click on the infographic for enlarged image)

  • See more at: https://visual.ly/community/infographic/entertainment/disney-empire#sthash.TufgFoFE.dpuf

Proprietary Humor:

Source: Mimi and Eunice

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Pixabay

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

 

The Patent Chronicle

in Sci-IP by

June 6, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

via GIPHY

 

 

US Supreme Court interprets reselling in light of “patent exhaustion”

Decision: In a case involving Lexmark ‘s printer cartridges, the US Supreme Court ruled that Lexmark could not use the patent laws to enforce the contractual conditions it placed on the sale of cartridges. The ruling added that under the doctrine of “patent exhaustion”, once a patent holder sells an item, it could no longer control the item through the patent laws.

Reason: Lexmark had approached the court for infringement by Impression Products, over refilling and reselling of its cartridges after they are empty. Lexmark sold the cartridges under the condition that they may not be reused after the ink ran out. Impression products did just that after procuring empty Lexmark cartridges.

Impact: Since the court made it clear in their ruling that users of patented products can do what they wish with purchased items after without fear of infringement, this opens doors for businesses to engage in refurbishing and reuse of patented products without fearing infringement suits. It is good news for consumers and for the environment and bad news for patent holders as this would clearly extend the life of products beyond what they had contemplated directly affecting market shares.

Read more

 

Shire survives Inter Partes Review of its patent by amending claims

Decision: USPTO’s PTAB granted Shire a motion to amend its claims in an Inter Partes Review (IPR) at the board brought by Amerigen.

Reason: Amerigen had initiated the proceeding and also requested the Board to not allow Shire’s motion to amend on the grounds that Shire failed to demonstrate the patentability of a proposed substitute claim. PTAB reasoning, based on claim construction and dependency of a multiple dependent claim, was that the trial was restricted to one of the dependencies of the multiple dependent claim and removing one of the dependencies of the multiple dependent claim made the remaining claims patentable.

Impact: This is a rare case in which the PTAB allowed a motion to amend without asking the party to demonstrate the patentability of the proposed substitute claim based on Idle Free decision, which is on the list of Representative Orders, Decisions, and Notices from PTAB. The uniqueness of the decision was dependent largely on claim construction, claim dependency and as well as nature of the request for IPR, clearly something that patent agents and patent attorneys will depend on in future, instead of relying entirely on the Idle Free precedent.

Read more in http://www.natlawreview.com/article/patent-owner-extinguishes-ipr-amending-claims

International Trade Commission may punish Garmin in infringement

Decision: In an Initial Early Determination (IED), an ITC judge recommended that Garmin pay 37 million dollars to Navico.

Reason: Garmin ignored a previous cease and desist order from ITC on a case involving infringement of Navico’s patent.

Impact: If the recommendation is followed through, Garmin ends up paying the huge fine for not following ITC order to cease and desist. The EID also contents that Garmin’s “design-around” innovation to the infringed technology also infringes Navico’s patent on Sonar Technology. Navico will clearly gain an upper hand in the technology if the recommendations make it into the final ruling.

Read more
A video comparing the technologies can be accessed at

 

Japan leads in international patent filings

Source: A WIPO report that analyzed the addresses of inventors in close a million PCT applications filed between 2011 and 2015.
Findings: The Japanese cluster had more than double the number of applications compared to the Chinese cluster that came second. US stood third and the number of applications was nearly a third of that of the Japanese cluster, putting Japan in a clear lead.

Follow through: WIPO regularly publishes Global Innovation Indices. The next one is due on June 15th.

Read more

Infographically Speaking…

Inventing Across Borders

Click on the infographic for enlarged image (Source Visually)

 

Proprietary Humor

Source: Mimi and Eunice

 

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Wikimedia Commons

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

 

 

 

 

The Patent Chronicle

in Sci-IP by

May 23, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

So let’s light up our patent awareness for the week!

via GIPHY

Strict limits on patent litigation venues in future

Decision: The US Supreme Court ruled unanimously in favor of TC Heartland in the case against Heinz preventing Heinz from litigating in Delaware.

Reason: The practice of selecting friendly favorable venues was an irritant for majority of patent owners. The court had realized the far-reaching consequences of the case and taken pains to carefully weigh the facts before delivering it’s ruling.

Impact: The case was high profile and closely followed by everyone. Suing for infringement in friendly and favorable venues such as Delaware and the Eastern District of Texas will be impacted in light of this ruling. It is a big win against Trolls favor the two venues.

Read more

Aurobindo Pharma secures unusual injunctive relief against Mylan

Decision: The Federal circuit granted injunctive relief for Aurobindo in the infringement case brought against it by Mylan on Isosulfan Blue (IB).
Reason: The court felt that Aurobindo is likely to prevail on merits, will likely suffer irreparable harm in the absence of such relief, the balance of equities favor it, and it is in public interest.
Impact: The bigger impact of the ruling comes from the test that was applied by the court to provide relief. Instead of a function-way-result test (product performing substantially the same function in substantially the same way to obtain the same result), the court used the insubstantial differences test (accused product or process is substantially different from the patented one) stating that is more appropriate for chemical arts. The ruling could be a trendsetter giving as much importance to the process as the product. This could bode well for the chemical arts. The relief provided for Aurobindo is a motivation for others interested parties also to strategize their assets.

Read more

 

SC to weigh in on Inter Partes Review practice

Decision: The US supreme court decided to take up a case that will review whether USPTO’s PTAB should issue written decisions on all of the claims challenged by a third party in Inter Partes Reviews or just on the claims PTAB chose to review.

Reason: The PTAB usually grants a review based on merits of the likelihood that the petitioner would prevail with respect to at least one claim. In the process, not all the claims are necessarily chosen for review. In scenarios where the petitioner successfully gets the PTAB to invalidate some of the claims in a patent under review, the PTAB issues written decisions only on those that were reviewed in the procedure.

Impact: If it is ruled that PTAB should issue written decisions on all the claims in the contested patent, it will put additional burden on the Board. For the petitioner the written decisions on all the claims will be a useful resource if the Board’s decision is questioned later in the court by the patent owner.

Read more

Abbvie’s Humira patent invalidated

Decision: USPTO’s PTAB invalidated Abbvie’s key Humira patent.

Reason: Coherus Biosciences had approached PTAB for invalidating a key patent that covers Humira.

Impact: The patent was set to expire in 2022. Humira brings in multibillion dollars to Abbvie. The impact of the ruling was immediate as the stocks of Abbvie dived and Coherus gained. Coherus is coming up with biosimilars to the Humira. In light of the ruling, they can use the same drug regimen for treatments. Abbvie has other patents that protect the formulations till 2022. Coherus will have to figure out a strategy to deal with the remaining patents that survived while marketing their biosimilar. Needless to say, there are others also wanting to cash in on this turn of events.

Read more

 

 

Infographically Speaking…..

The State of the Pharmaceutical Industry

From Visually.

 

Proprietary Humor From Mimi and Eunice

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source: Wikimedia Commons

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

The Patent Chronicle

in Sci-IP by

(May 16, 2017) Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club

 

Bounty on Trolls

Decision: Tech firm Cloudware announced bounties (20,000$ and 50,000$) for invalidating patents owned by Blackbird, a company formed by lawyers that files law suits against tech and retail firms.

Reason: Blackbird sued Cloudware for one of the patents they own. Couldware was convinced that Blackbird was behaving like a patent troll. Therefore they decided to announce a bounty, not just on the Blackbird patent that is the basis of the law suit against them, but for every patent Blackbird lists on their website.

Impact: Patent invalidation in courts and in the USPTO is common. Usually any prior art that discloses the crux of the invention before the priority date of the patent is sufficient to get a patent invalidated. The bounty on Blackbird patents could attract prior art search experts to hunt for information that has the potential to invalidate Blackbird patents. It gives more bangs for buck for all parties except Trolls.

Read more

 

 

Pittsburgh’s Renovacare patent challenged in USPTO

Decision: Avita, an Australian firm successfully filed an inter partes review in the USPTO seeking to invalidate Renovocare’s US Patent No. 9,610,430.

Reason: Avita believes that USPTO should never have granted the patent in the first place, in light of Avita’s patent.

Impact: Inter partes review is a post grant challenge mechanism at the USPTO that banks on prior art that are patents and publications while seeking to invalidate a granted US patent. USPTO’s PTAB will review the challenge. US patent 9,610,430 discloses and claims a “Device for cell spraying, manufacturing of the device, method for spraying with the device and a cell suspension sprayed with the device”. According to Renovocare’s description, the device can be successfully used to spray a patient’s own stem cells onto burns and wounds for rapid self-healing. The device patent has a term till 2035. It is doubtful whether Avita’s patent will be valid prior art for Renovacare’s device.

Read more

 

 

Post-doc sues Professor for patent royalties

Decision: An ex-Harvard University post-doctoral scholar sued his mentor for patent royalties on CortistatinA patent, that fetched millions in royalties.
Reason: The professor had excluded the researcher. It is alleged that he was assured of inclusion in the patent and was the only one working on the project when it was initiated.
Impact: Definitions for inventorship in a patent application or patent and authorship in an academic publication are different. Anyone contributing to the concept of an invention that is claimed in a patent has the right to be an inventor. If evidence indicates that the researcher contributed to the concept and not merely worked on the project, he could win the right to the royalties on the patent.

 

 

2017 Revision of Chinese Patent Office guidelines

Decision: Chinese Patent Office published revised guidelines for examining patent applications in chemical, business-method and computer-implemented areas.

Reason: The Chinese Patent Office had made several amendments to their patent law and sought discussions before finalizing them. At the conclusion of these discussions, many revisions were finalized that would have a lasting impact on access to patent filing data, consideration of supplemental information during examination, invalidation procedures, and patentable subject matter.
Impact: The impact of the changes will be huge especially for three areas. The subject areas and key amendments are listed in the source provided in the link. In Biotech/Chem, “examiners are explicitly permitted to consider supplemental experimental data submitted by the applicant during prosecution when arguing against a lack of sufficient disclosure rejection”, if they meet certain criteria. Business methods are no longer considered “mental activity” that are not patent eligible, if they meet certain criteria. In Software, computer softwares are now patent eligible if they meet certain criteria.


Read more

JD Supra’s PTAB reports on Life Science Patents

Importance: The validity of granted US patents may be questioned both in the USPTO and in the US court system. Many cases are taken up through post-grant challenge procedures available at the USPTO. Life Science and Pharma being an important financial/innovation sector, it will be great to have a handle on such activities available on a periodical basis, especially for people who are employed or invested directly or indirectly in that sector.
Impact: The PTAB reports on Life Science Patents from JD Supra appears be a worthwhile place for investors and consultants to understand the risks and nature of Patent proceedings and which companies are good at taking care of their IP and which companies have their IP rights being questioned. It may hint at emerging trends and chances of some patents getting invalidated over others. Added attraction- it is free.

Read more

About the author:

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

Feature image source

Blog design: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

 

1 2 3
Go to Top
Close
loading...
%d bloggers like this: