1. Patent Prosecution
June 2013
June 13, 2013

2. Overview
Welcome
Quick Patent Prosecution Updates
General Discussion

3. Myriad Case Facts: Held:
Myriad Genetics located and developed a test for the BRCA1 & BRCA2 genetic mutations which substantially increase the risk of breast and ovarian cancer
Example Composition Claims
Claim 1 “[a]n isolated DNA coding for a BRCA1 polypeptide,” which has “the amino acid sequence set forth in SEQ ID NO:2.” = DNA
Claim 2 “[t]he isolated DNA of claim 1, wherein said DNA has the nucleotide sequence set forth in SEQ ID NO:1.” SEQ ID NO:1 = cDNA
Held:
DNA, an even isolated form- not patent eligible under 35 U.S.C. 101
cDNA (Complementary DNA), which includes the same protein-coding information found in the DNA but omits segments that don’t code for proteins- may be patent eligible because it is not naturally occurring.

4. Myriad Case
Notes:
No method claims- innovative method of manipulating genes while searching for BRCA gene = patent eligible
Claims don’t involve new applications of knowledge
Did not consider patent eligibility of DNA in which the nucleotides are altered

5. Myriad Case
JUSTICE SCALIA, concurring in part and concurring in the judgment.
I join the judgment of the Court, and all of its opinion except Part I–A and some portions of the rest of the opinion going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief. It suffices for me to affirm, having studied the opinions below and the expert briefs presented here, that the portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature.

6. Power of Attorney
Having Powers of Attorneys kicked back from the USPTO because the Applicant is not designated on the ADS
Solution: file ADS naming the Applicant along with Power of Attorney documents

7. AIA Transition Applications
ADS- AIA Statement
Secretary’s instructed to NOT check this box, unless attorney specifically instructs otherwise.
Attorney’s responsibility to decide.

8. AIA Transition Applications
How to fix if you accidentally checked the AIA Statement box on the ADS
Submit a corrected ADS with the box unchecked.
Cover letter explaining that checking the box was inadvertent.

9. Cooperative Patent Classification (CPC)
Joint (Global) Classification System Based on the European Classification system (ECLA)
More granular than the International Patent Classification (IPC) system
Participants
EPO
USPTO
Korean Patent Office (KIPO)
China (SIPO)

10. Cooperative Patent Classification (CPC)
Now Implemented in the USPTO (January 1, 2013)
2 Year Transition
Newly filed US applications ("A" publications) will be classified in the USPC and the CPC
US patent grants ("B" publications) will be classified in either the USPC or the USPC and the CPC
CPC symbols will be printed on the front page, next to the IPC and USPC symbols.
By January 1, USPTO will exclusively classify CPC (but will keep IPC)

11. Cooperative Patent Classification (CPC)
A01B33/08
Sections A
Classes 01
IPC
Subclasses B
Groups
33(/00)
Subgroups
CPC 08

12. Cooperative Patent Classification (CPC)
Sections
A: Human Necessities
B: Operations and Transport
C: Chemistry and Metallurgy
D: Textiles
E: Fixed Constructions
F: Mechanical engineering
G: Physics
H: Electricity

13. Cooperative Patent Classification (CPC)

14. Cooperative Patent Classification (CPC)
Working on implementing CPC for our subject matter conflicts
Converting US classes to CPC
Searches
Need to start using CPC

15. After Final Consideration Program Pilot 2.0
Avoids the Expense of RCE’s
Timing
Responses to Final Office Actions Filed From May 19, 2013 to September 30, 2013
Requirements (NO FEE)
Request for Consideration Under Pilot (PTO/SB/434)
Amendment to at least one independent claim that does not broaden it
Willing to participate in an interview

16. After Final Consideration Program Pilot 2.0

17. After Final Consideration Program Pilot 2.0
What does the Examiner Get?
Up to 3 Hours non-production time
10 day adjustment of docket management clock
Outcome
Examiner can deny request (file RCE)
Allow the application
Request interview
Need to conduct interview within 10 days
Otherwise back to filing RCE

18. After Final Consideration Program Pilot 2.0
Results- it works
Filed Request June 5, 2013
Examiner called yesterday (June 12) requesting a few minor changes for Notice of Allowance
Saved client the expense and time of an RCE!

19. Patent Prosecution
June 2013
June 13, 2013