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« Biotech/Pharma Docket | Main | AIPLA Annual Meeting »

September 23, 2010


"It would shock one's sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, . . . and then prevent the public from making any beneficial use of such product by securing patent upon each of the uses to which it may be adapted."

I still agree with that, but yet they still have done nothing about software being patented even though it shocks one's sense of justice.

""[h]ad anyone other than Eli Lilly discovered this method of treating cancer with gemcitabine, quite clearly they would have been entitled to a patent"

Assuming they filed their app the exact day that Lilly filed theirs. Otherwise there might just be some prior art situations created from one case to the other or vice versa.

"Had Lilly presented claims to both methods of use in the same patent, the brief argues that the application would have been subject to a restriction requirement, which would have forced these claims to be pursued in two separate patents. This part of the brief implies strongly that it is equally "a shock to a sense of justice" to have substantive rights so influenced by procedural details of whether the claims are presented in the same or separate applications"

Interesting. So, they knew that they needed to get 121 protection by getting a restriction req and yet summarily choose not to do that.

I think the PO's position is going to be pretty simple. The law isn't terribly confusing, and neither is the DP caselaw.

While I agree with them on the whole substantive matters hanging on procedural issues. These kinds of things happen all the time in patent law. If you wait until after 6mo to file a response, for example, you might just get some substantive matters that hang on a procedural issue.

Dear 6:

Software isn't my area. Don't know enough to opine on whether it should be patentable or not.

Correct about the prior art, but the point is that the '614 and '826 patents were filed on the same day. So the point WLF is making is disproportional treatment of Lilly as opposed to anyone else.

Thanks for the comment.

Dear 6:

I would say that having applicants jump through these kinds of otherwise meaningless procedural hoops is inefficient in both the practical and economic senses. Does it make sense to make the PTO go through the time and effort to promulgate a restriction requirement etc.? Wouldn't it make more sense to interpret the law the way WLF suggests?

Thanks for the comment.

dude odp rejections are in place for a reason.

"The group argues that the Court's decisions threaten to lower the incentive to innovate by limiting a patentee's ability to protect improvements in their inventions. Citing Miller v. Eagle Mfg. Co., 151 U.S. 186, 198 (1894), the brief argues that it is settled law that "an inventor may obtain 'a separate patent' for a 'new improvement on his own invention.'" Id. at 199. "

That is the way they want to interpret the law, and yes, it would make sense, except for one small issue. What is going on in this case isn't just the patentee getting a patent on his improvement. It is him getting a distinct patent for an "obvious" improvement. And, I'm pretty sure, odp is there to prevent things like getting outrageous PTA extension.

The procedural things are there for a reason or two Kev, and I agree, they're inefficient and we could do better. Even so, there's no reason presented in this case for us to get rid of the procedure or ignoring what the ramifications of not following it are.

Besides, non-stat ODP is kind of easy to get around isn't it? Maybe I'm thinking of the wrong thing here, but isn't a terminal disclaimer all you need? Can you not file one after the patent issues and have everything be cool?

Dear 6:

I think it is the "obviousness" of the improvement that is the issue. If this were a typical case, and patent 1 was filed at time 1 (and included the anticancer use), and then patent 2 was filed at later time 2, then I would tend to agree that a use called out in patent 1 but patented in patent 2 would be subject to obviousness-type double patenting without the safe harbor of Sec. 121.

But here, patent 1 and patent 2 were filed on the same day. It is merely an anomaly of the change in the law that they were granted at different times; indeed, there is a principle that if patent 2 were to grant before patent 1 (patent 1 being filed earlier), then patent 1 would not be subject to ODP, because the later grant was due to PTO "inefficiency" (go figure :)).

So while I think you and the panel may be correct 99 and 44/100ths of the time, here I think we have an exception. And the "policy" rationale that we want to limit the term of patents on drugs isn't sufficient in my view to justify ignoring the exceptional facts in this case.

Thanks for the comment.

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