Monthly Archives: April 2012

Drafting Health Sciences Process Claims after Prometheus

Posted on April 16, 2012 by Gary Juskowiak under The Bolt

The Supreme Court’s decision in Mayo v. Prometheus (2012) raised the 35 USC §101 bar on patentable process claims in the health sciences.  Prometheus’ patented processes adjusted the dosage of thiopurine, based on the concentration of drug metabolites in a patient’s blood.  The Supreme Court found that these metabolite-efficacy relationships embodied laws of nature: “the relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm” are “laws of nature.”  Moreover, the additional steps of “administering” the drug and “determining” the metabolite levels did not make the claims patentable.  The Court noted that doctors already “administered” thiopurine drugs to treat patients with autoimmune diseases, and methods for “determining” metabolite levels were “well known in the art.”  Therefore, these two additional steps were “purely conventional or obvious pre-solution activity” and they were not sufficient to make the entire processes patentable.

While Prometheus may have narrowed the scope of §101, it also left clues for how to successfully draft patentable health sciences process claims.  These clues are: (1) root the process in a physical transformation; and (2) frame a robust inventive concept. Continue reading →

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Golan v. Holder and the URAA’s Impact on the Public Domain

Posted on April 9, 2012 by Karan Dhadialla under The Bolt

Peter and the Wolf, a symphony written by Sergei Prokofiev in 1936, recently received national attention through the Supreme Court decision of Golan v. Holder.  Golan, decided on January 18th, 2012, upheld the constitutionality of Section 514 of the Uruguay Round Agreements Act (“URAA”)—a provision that brought the United States into better compliance with international copyright conventions.  Section 514 removes certain foreign works, like Peter and the Wolf (a popular orchestral piece for young children), from the public domain.  In other words, Section 514 “restores” copyright entitlements to the owners of these works for a specified amount of time.

The controversy of this Section arises for people like Lawrence Golan who previously enjoyed free access to these works without having to seek permission from copyright holders.  Others, like the Electronic Frontier Foundation, see even larger issues between private and public interests at stake with the upholding of URAA.  Accordingly, the petitioners challenged the constitutionality of the Section both under the Constitution’s Copyright and Patent Clause (Art. I, § 8, cl. 8 ) and under the First Amendment of the Constitution.  Although the Court ultimately upheld the constitutionality of Section 514, the majority and dissent opinions bring some interesting tensions to the foreground.

Legal Background

The International Context

The Berne Convention, which originally went into effect in 1886, is an agreement that governs the copyright relations between its member nations.  More specifically, the Berne Convention grants nationals of member nations copyright protection in other member nations for a minimum of the author’s lifespan plus fifty years, unless the copyright term has expired in the nation of origin or the nation in question. Continue reading →

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Recent Developments in Trade Secret Law

Posted on April 2, 2012 by Jesse Koehler under The Bolt

With New Jersey’s recent adoption of a variation of the Uniform Trade Secret Act (“UTSA”), all but four states (Massachusetts, New York, North Carolina and Texas) have implemented some form of the UTSA. However, courts in some of the states adopting versions of the UTSA are still drawing the limits of their statutory liability for misappropriation of trade secrets. Most recently, courts in California and Virginia have handed down key decisions clarifying statutory application.

New Jersey Joins the Ranks of the UTSA

On January 9, 2012, Governor Chris Christie signed into law the New Jersey Trade Secrets Act (S-2456/A921), which covers issues of trade secret misappropriation previously dealt with under common law. The statute aligns closely with the UTSA but differs in some significant ways. First, the statute specifically incorporates the protections of the common law stating that application of the statute shall not “be construed to deny, abrogate or impair any common law . . . right, remedy or prohibition.” One interpretation of the statute predicts that application of this section of the statute will protect proprietary and/or confidential information that does not meet the statutory requirements of trade secret, but was none the less protected under common law. Continue reading →

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