Update on Myriad Appeal and Announcing a Public Forum on the USPTO 101 Guidelines

17 April 2014 PharmaPatents Blog

Myriad has appealed the district court decision that denied its motion for a preliminary injunction against Ambry Genetics Corp. According to a report in Bloomberg BNA Life Sciences Law & Industry Report™, on April 14 , 2014, the Federal Circuit denied Myriad’s motion to expedite proceedings, but it is still possible that this Myriad appeal will be argued and decided by the end of this calendar year.

Representative claims at issue in this Myriad appeal include claims reciting pairs of single-stranded DNA primers and methods of detecting sequence mutations using one of many laboratory techniques. As discussed in this article, the district court determined that Ambry had “raised a substantial question concerning … subject matter eligibility.” Thus, this appeal could require the Federal Circuit to apply the Supreme Court’s Myriad decision to a different set of product and method claims.

Forum on USPTO 101 Guidelines

The USPTO has announced that it is hosting a forum on the 101 Guidelines, in order “to solicit feedback from organizations and individuals.” The forum will be held May 9, 2014, from 1:00 to 4:00 pm at the USPTO’s headquarters in Alexandria, Virginia.

According to the USPTO press release, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee stated that ”this forum will provide an opportunity for participants to present their interpretation of the impact of Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analyses during patent examination.” The USPTO is particularly interested in “alternative” approaches to interpreting the relevant Supreme Court decisions (supported by “legal rationale”) and “additional examples … to create a more complete picture of the impact of Supreme Court precedent on subject matter eligibility.”

The USPTO is requiring preregistration for the forum, as detailed on the USPTO’s subject matter eligibility webpage.

It will be interesting to see what alternatives are suggested, and whether the alternatives take similar or distinct approaches. It also will be interesting to see how many alternatives the USPTO adopts, and how quickly it issues revised guidelines.

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