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Patent-Eligible Subject Matter › Diagnostic Method

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
Linda Liu & Partners

Examples of Patents for Computer-Aided Diagnostic Methods

Linda Liu & Partners on

The latest version of the CNIPA’s Guidelines for Patent Examination (hereinafter referred to as “the latest Guidelines”) came into force as of January 20, 2024. In comparison with the previous version of the Guidelines, there...more

BakerHostetler

The Supreme Court Again Declines To Reevaluate Subject Matter Eligibility of Diagnostic Claims

BakerHostetler on

The Supreme Court seemed, at least to a small degree, interested in evaluating the subject matter eligibility of diagnostic claims when it requested that the respondents (Natera Inc. and Eurofins Viracor Inc.) respond to a...more

ArentFox Schiff

Federal Circuit Affirms PTAB Decisions Holding Computer-Based Diagnostic Method Claims Ineligible

ArentFox Schiff on

Decision highlights the need for applicants to focus on additional improvements to technology when drafting and prosecuting applications directed to computer-implemented diagnostics methods. On March 25, 2021, the Federal...more

Smart & Biggar

CIPO's new guidelines on patentable subject matter explained

Smart & Biggar on

The Canadian Intellectual Property Office (CIPO) released new guidelines on patentable subject matter and a set of examples applying the new guidelines to computer-implemented inventions, medical diagnostic methods, and...more

Williams Mullen

[Webinar] CLE Institute - Can They Own That? A Summary of the Biggest Patent and Trademark Cases and Trends of 2020. - October...

Williams Mullen on

This program will cover important patent and trademark trends and cases in 2020, including: - The Trademark Modernization (TM) Act of 2020 - Counterfeiting: Tiffany v. Costco - Transformation from Generic to Protectable:...more

Smart & Biggar

Federal Court rejects “problem-solution approach” opening the field for computer-implemented inventions

Smart & Biggar on

In a significant decision released August 21, 2020, Choueifaty v Canada (Attorney General), 2020 FC 837 [Choueifaty], Canada's Federal Court rejected the Canadian Intellectual Property Office’s (CIPO) approach to examining...more

McDonnell Boehnen Hulbert & Berghoff LLP

Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

McDonnell Boehnen Hulbert & Berghoff LLP on

Federal Circuit Hands Down Modified Opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc. Earlier this year, the Federal Circuit (somewhat surprisingly) found claims of two Sequenom patents directed to methods for...more

Flaster Greenberg PC

Impact of Federal Circuit’s Opinion in 'Athena' on Medical Diagnosis Patents

Flaster Greenberg PC on

Is a new method of diagnosing a disease patentable? Can it survive a motion to dismiss? And, irrespective of the current precedent, should a new method of diagnosing a disease be patentable? These are questions the U.S. Court...more

Fish & Richardson

Section 101: Cert. Denied … Now What?

Fish & Richardson on

Since the Supreme Court’s decisions in Mayo Collaborative Services, LLC v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. v. CLS Bank, 573 U.S. 208 (2014), lower courts and the United States Patent and...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Decision Provides Opening for Preparation Methods in Diagnostic Space, But Not for Diagnostic Claims

Akin Gump Strauss Hauer & Feld LLP on

The Federal Circuit held that two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under Section 101, reversing a decision from the District Court for the Northern District of...more

McDonnell Boehnen Hulbert & Berghoff LLP

CareDX, Inc. v. Natera, Inc. (D. Del. 2020)

McDonnell Boehnen Hulbert & Berghoff LLP on

Ever since the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories was handed down in 2012, diagnostic method claims have been routinely invalidated by the district courts and those decisions...more

Kramer Levin Naftalis & Frankel LLP

Supreme Court Won’t Take Up Patent Eligibility for Medical Diagnostics

Kramer Levin Naftalis & Frankel LLP on

The cloud of uncertainty over patent eligibility of patents for medical diagnostic methods remains. On Monday, the Supreme Court declined the opportunity to revisit patent eligibility under its two-step Mayo test when it...more

Troutman Pepper

Supreme Court Denies Review In Three Section 101 Cases

Troutman Pepper on

On January 13, 2020, the U.S. Supreme Court denied certiorari in the following cases...more

Kramer Levin Naftalis & Frankel LLP

The Whole Enchilada: The Necessity of Looking at Claims as a Whole to Determine Patent Eligibility

Kramer Levin Naftalis & Frankel LLP on

On Jan. 10, the Supreme Court will decide whether it will review the Federal Circuit's decisions in the Athena v. Mayo, HP Inc. v. Berkheimer and Hikma v. Vanda cases. The Solicitor General, at the invitation of the Supreme...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - December 2019: Prosecuting Bioinformatics Patent Applications in China

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

This article discusses challenges in prosecuting bioinformatics patent applications before the China National Intellectual Property Administration (CNIPA). The CNIPA determines the subject-matter eligibility of bioinformatics...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - December 2019: Prosecuting Bioinformatics Patent Applications in Europe

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

This article discusses challenges in prosecuting bioinformatics patent applications before the European Patent Office (EPO). The EPO determines the subject-matter eligibility of bioinformatics patent applications under...more

Foley & Lardner LLP

USPTO October 2019 Patent Eligibility Guidance Update Includes New Guidance And Examples For Life Sciences

Foley & Lardner LLP on

The USPTO has released additional patent eligibility guidance to supplement the guidance released in January. While much of the October 2019 Patent Eligibility Guidance Update relates to claims falling under the “abstract...more

Foley & Lardner LLP

A Patent-Eligible Diagnostic Method Claim

Foley & Lardner LLP on

On Friday I will be speaking at the AUTM Eastern Regional Meeting, on a panel discussing patent eligibility issues for life sciences inventions. My topic relates to what the USPTO refers to as “nature-based products,” but...more

Sunstein LLP

Federal Circuit Asks Congress to Override Supreme Court's Denial of Patents for Diagnostics

Sunstein LLP on

In a remarkable collection of opinions that have no direct effect on the law, the Federal Circuit has implicitly given its support to efforts in Congress to override the Supreme Court’s decision in Mayo v. Prometheus, which...more

Bradley Arant Boult Cummings LLP

For the First Time, a Medical Treatment Patent Is Ruled Invalid Under Mayo/Myriad

Bradley Arant Boult Cummings LLP on

As discussed in a previous blog post, since Mayo v. Prometheus, critics of medical treatment patents have advocated that such patents should be banned from patenting. While such arguments seemed futile based on the consistent...more

McDermott Will & Emery

Fractured Federal Circuit Maintains Ineligibility of Diagnostic Methods

McDermott Will & Emery on

In an opinion evidencing the split in opinion regarding the patent eligibility of diagnostic methods, the US Court of Appeals for the Federal Circuit denied a petition for panel rehearing or rehearing en banc, leaving in...more

Knobbe Martens

Federal Circuit Review - July 2019

Knobbe Martens on

Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v.  Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more

King & Spalding

Federal Circuit Continues Trend of Finding Diagnostic Inventions to Be Patent-Ineligible

King & Spalding on

On August 9, 2019, the Federal Circuit issued a public opinion in Genetic Veterinary Sciences, Inc. v. LABOKLIN GmbH & Co. KG, finding claims directed to methods for detecting a genetic marker for a canine hereditary disease...more

Bradley Arant Boult Cummings LLP

Detecting Disease Is Not a “Tangible and Useful Result” Eligible for Patenting

Bradley Arant Boult Cummings LLP on

The federal appeals court with jurisdiction over questions of patent law has consistently held that methods of diagnosing a disease or other biological condition violate the Supreme Court’s ban on patenting “natural...more

Foley & Lardner LLP

Federal Circuit Agrees Genotyping Method Is Not Eligible For Patenting

Foley & Lardner LLP on

In Genetic Veterinary Sciences, Inc. v. Laboklin GMBH & Co., the Federal Circuit upheld the district court decision that held claims directed to methods for genotyping a Labrador Retriever invalid under 35 USC § 101 at the...more

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