Obtaining issued patents in the biotechnology space can be a challenge.  Here is a list of ten patent strategies we recommend for biotechnology innovators to increase their odds of obtaining valuable intellectual property from the patent office.

In a final written decision, the PTAB found all challenged claims patent-eligible in Tradestation Group, Inc. v. Trading Tech. Int’l, Inc., CBM2015-00161, Paper 129 (P.TA.B. Feb. 17, 2017), an uncommon result in a CBM proceeding.  But this case is more uncommon still—a dissent filed by one PTAB judge contended for patent ineligibility despite the Federal Circuit previously finding eligibility on the same claims.

The USPTO’s Patent Trial and Appeal Board (PTAB) has released its January 2017 statistics.  Most notable is the surge in petition filings, particularly inter partes review IPR petition filings.  In January 2017, 246 petitions were filed, 237 of which were IPR petitions.

The PTAB issued a Final Written Decision upholding Pozen’s ulcer reducing Vimovo® claims based on unexpected results in Coalition For Affordable Drugs VII LLC v. Pozen Inc., IPR2015-01718, Paper 40 (P.T.A.B., Feb. 21, 2017).

On January 12, 2017, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the judgement that Eli Lilly’s U.S. Patent No. 7,772,209 (“the ’209 Patent”) was valid and infringed under the doctrine of induced infringement.  Specifically, the Court relied upon product labeling, which instructs doctors and patients on the dosage ranges and schedules recited in the asserted claims of the ’209 Patent. 

The Patent Trial and Appeal Board (PTAB) terminated a patent interference proceeding between the University of California (UC) and the Broad Institute (Broad), a joint venture of Harvard University and Massachusetts Institute of Technology.  The PTAB held that the claims of UC’s patent application did not overlap with the claims of Broad’s patents and patent application sufficiently to support an interference proceeding.  

Once considered parasites, free riders, or “opportunistic pathogens,” in recent years the roughly 100 trillion symbiotic bacteria that inhabit the various tissues of the human body have been increasingly recognized for their importance in maintaining human health.

In a non-precedential decision, the Federal Circuit found that appellant PPG had Article III standing to file an appeal from two inter partes reexaminations.  However, the Court found that appellee Valspar’s subsequent “Covenant Not to Sue” had mooted the appeal. 

It is well known among patent attorneys that design patents are an under-utilized form of protection in the fashion and beauty industry.  See, Nicole R. Townes and Robert Roby, Design Patents – The Often Forgotten, But Useful Protection for Accessories and a Designer’s Timeless and Staple Pieces.  Design patents should always be considered for timeless and iconic pieces or for pieces that form the building blocks of a designer’s collection.

The PTAB denied institution of an IPR based on patent owner’s challenge to the prior art status of a PCT publication that was asserted by the petitioner as pre-AIA 35 U.S.C. § 102(e) prior art in Forty Seven, Inc. v. Stichting Sanquin Bloedvoorziening, IPR2016-01529, Paper 13 (P.TA.B., Feb. 9, 2017).