SCOTUS Shakes Subject Matter Eligibility: Implications for Natural Products

Posted on by

Over the past five years, the U.S. Supreme Court has morphed patent eligibility under 35 U.S.C. § 101 from a low-bar threshold test (e.g., anything under the sun that required the hand of man) to a substantive, complex standard that is ill-defined.

In the biotechnology area, the Supreme Court recently overturned two Federal Circuit holdings, surprising many in the IP community. Indeed, hundreds of claims in issued patents are thought to be invalid as a result of the new Supreme Court patent eligibility standards. For example, in Association for Molecular Pathology v. Myriad Genetics (2013), the Supreme Court held that claims to isolated genes (i.e., DNA isolated from a naturally occurring biological cell) are not patent eligible. This reversed the USPTO’s approximate thirty year policy of issuing such claims.
Further, in March 2014, the USPTO issued a memorandum setting forth examination guidelines for subject matter eligibility that many believe far overreach the Supreme Court holdings. These guidelines instruct examiners to reject claims drawn to any isolated natural product, not just isolated DNA.

The Supreme Court holdings and the USPTO Guidelines threaten to restrain innovation in natural products, including pharmaceuticals (~50% of all drugs are natural products or directly derived from natural products) and consumer products.

This presentation by Harry Guttman, Senior Counsel at Calfee, will discuss the Supreme Court holdings, the USPTO guidelines, and some possible strategies for protecting natural products in light of these recent developments.

For more information, and to register, please click here

Trademark Prosecution: Practice Tips and New Developments from the USPTO

Posted on by

On July 8, 2014 at noon, Mary Denison, the Deputy Commissioner for Trademark Operations at the United States Patent and Trademark Office, will discuss practice tips and new developments from the USPTO. She will cover tips to help you improve your trademark prosecution practice; resources available on the USPTO website (recent TMEP changes, examination guides, Spanish language resources); the electronic Official Gazette; e-filing; how to receive automated maintenance reminders; and how to subscribe for office news and alerts.

Ms. Denison was appointed Deputy Commissioner for Trademark Operations of the USPTO in 2011. In her position, Ms. Denison oversees the examination and processing of applications throughout the trademark operation. Ms. Denison is a founding partner of Manelli Denison & Selter PLLC in Washington, D.C. where her practice focused on trademark prosecution and litigation. She has been an active member of the 5,500 member International Trademark Association (INTA) for many years having served as a member of the INTA Board of Directors for three years; as Vice Chair and Chair of its Treaty Analysis Committee; and most recently she served as Chair of the USPTO subcommittee charged with representing the international trademark bar before the agency. The U.S. Secretary of Commerce appointed Ms. Denison to a three year term as a voting member of the Trademark Public Advisory Committee (TPAC) in October 2008. Ms. Denison was selected as a “Washington DC Super Lawyer 2007,” placing her in the top five percent of Washington, D.C. area lawyers. Prior to establishing Manelli Denison & Selter in 1996, she was a partner with Graham & James LLP where she practiced for ten years. Before joining Graham & James, Ms. Denison was associated with the New York law firm of Smith, Steibel, Alexander & Saskor where she was primarily involved in handling litigation for foreign clients. Ms. Dennison is a graduate of Duke University and the University of North Carolina School of Law.

For additional information and to register, please click here.

Dignity vs. Liberty: How European and U.S. Privacy Laws Differ, and Why It Matters

Posted on by

Privacy and data security are increasingly front page news, and consumers are suddenly paying a great deal more attention to what your clients are collecting, what they’re doing with that information, and what activities might put their data at risk. The good news is that more businesses are taking their privacy obligations seriously and asking what they need to do – but for businesses with an international presence, compliance is not simple.

A discussion on compliance usually starts with the proposition that European laws are far stricter than ours, but the differences are in some ways philosophical and not simply a matter of degree. Europe takes a dignity-based approach, while the U.S. approach is liberty-based. This has practical implications for what is considered a violation of privacy, what is considered the biggest threat to privacy, and what behaviors we are willing to (or refuse to) regulate in the name of privacy.

Date: June 10, 2014
Location: The Cincinnatian Hotel, Cincinnati, OH
Sponsor: Cincinnati Intellectual Property Law Association (CincyIP)
Topic: “Dignity vs. Liberty: How European and U.S. Privacy Laws Differ, and Why It Matters”
Presenter: Lori Krafte, Partner, Wood Herron & Evans, LLP
Time: 12:00 PM – 1:00 PM

Lori Krafte is a partner with Wood Herron & Evans. Lori counsels clients in all areas of advertising and media law, privacy, trademarks, copyrights, and domain disputes and other internet law matters. She teaches Advertising Law and Trademark Law at the University of Cincinnati College of Law, where she received the Adjunct Faculty Teaching Excellence Award. Lori has been listed in: The Best Lawyers in America in the fields of Advertising, Trademark Law, Copyright Law, and IP Litigation; Cincy Leading Lawyers; Ohio Super Lawyers; Chambers USA, America’s Leading Lawyers for Business; and IP Stars (Managing Intellectual Property), including IP Stars Top 250 Women in IP. She has been named to Ohio Super Lawyers’ Top 50 Women Lawyers in Ohio and Top 25 Women Lawyers in Cincinnati. Lori received the Distinguished Service Award in 2013 from AAF Cincinnati (the local affiliate of the American Advertising Federation). She is a member of the International Association of Privacy Professionals.