Patent Baristas

In recent years, the USPTO has been very slow to process papers when moving from the international (PCT) stage to entry into the U.S. national-stage.   It’s common to have a year or more pass before the USPTO gets around to actually looking at the national-stage papers and mailing a Notice of Missing Requirements or an official Filing Receipt.

In a review of several dozen randomly selected US national-stage application, Carl Oppedahl has identified some factors within the applicant’s control can affect the number of months of USPTO delay.

In one example US application, the national-stage papers were missing the inventor’s Oath. The USPTO did not get around to looking at the national-stage papers until seven months later, at which time the USPTO mailed a Notice of Missing Requirements. The actual completion of the US national-stage requirements happened about two months after that when the missing Oath was filed. And then … the USPTO didn’t get around to looking at the Oath until ten months later, on January 9, 2009 when the official Filing Receipt got mailed.

If the applicant does not leave out any parts, the delays within the USPTO prior to mailing the official Filing Receipt are often in the range of four to eight months. If, on the other hand, the application is missing any items on filing the national–stage papers, then the delay within the USPTO can be substantial.

So, here is the practice tip from Carl:

When entering the US national stage, it is very much to the applicant’s advantage if every possible missing requirement is eliminated. Make very sure that the Oath was on file prior to the 30-month date. Make very sure that all the correct fees have been paid prior to the 30-month date. Try to give USPTO no possible excuse at all for withholding the official Filing Receipt. Stated differently, the applicant that leaves out something important from the national-stage papers is likely to see additional delays of a year or more (in addition to the already striking delays in USPTO ‘ s handling of national–stage papers even when nothing is missing) in progress or cue application toward the examining corps.

It might be argued that it doesn’t matter since the pendency for examination can be longer than a year or two anyway. Since the Examiners take up cases based upon when the national-stage requirements were met (and not based upon when the case was released to the Examining Corps) then the applicant is not prejudiced in when the Examiner takes up the case.

While there are plenty of art units with pendency that exceeds the delays in the USPTO’s handling of national-stage papers, some art units have shorter pendencies. In such an art unit, the USPTO delays in handling national-stage papers can cut into the substantive rights of the applicant, by delaying the eventual grant of the patent.

Thanks to Carl Oppedahl of the Oppedahl Patent Law Firm LLC for the practice tip.

Ben Keeton, of the Kentucky BioAlliance, joins in on the State of Affairs show on station WFPL, Louisville’s NPR News station.  On the program, biotech insiders look at Biotechnology, Biologistics, and Biobusiness in Kentucky.  The show first asks “What is biotechnology?” and then they ask the experts to explain the what, why and how of the biotechnology industry, and what it means for Kentucky.

The show also looks at how Kentucky is putting a twist on its roots as a tobacco state by using transgenic tobacco plants for producing plant-made pharmaceuticals (PMPs).  Researcher Dr. Kenneth Palmer is working with a team at the Owensboro Cancer Research Program, in partnership with the James Graham Brown Cancer Center in Louisville. The team has identified a gene that, through a series of steps, can enable a tobacco plant to produce certain proteins.  Researchers can then extract the protein they need for the HPV vaccine. It’s all happening at the Kentucky Bioprocessing plant in Owensboro, KY.

Listen to the Show

Slideshow of Images from Kentucky BioProcessing in Owensboro

Related Links:

• Kentucky BioAlliance
• Biotechnology Industry Organization
• Beshear brings Kentucky message to biotech conference
• Biotech fever

President Barack Obama has announced his intent to nominate David J. Kappos as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

According to the press release:

Mr. Kappos is Vice President and Assistant General Counsel, Intellectual Property Law, for IBM Corporation. Based in Armonk, New York, Mr. Kappos directs IBM’s Intellectual Property Law function, providing legal counsel over all facets of protecting and licensing IBM’s intellectual property assets and leading IBM’s engagement of intellectual property law policy issues. In particular, Mr. Kappos is responsible for the management of IBM’s patent and trademark portfolios; protecting and licensing intellectual property (patents, copyrights, trademarks, know-how and technology) worldwide; directing intellectual property law operations relating to the research, services, consulting, computer systems, storage products, semiconductor and technology development, software, marketing and other groups, divisions, and entities within IBM. In addition, Mr. Kappos has responsibility for IP policy and coordination with IBM’s litigation and corporate development groups in matters relating to intellectual property. Mr. Kappos serves on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He is also the Vice President of the Intellectual Property Owners Association. He has held various previous leadership positions in intellectual property law associations in Asia and the U.S. He has spoken widely in Asia, Europe, and the U.S. on intellectual property topics. Mr. Kappos received his Bachelor of Science Degree in Electrical and Computer Engineering from the University of California Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a Development Engineer and has served as an Intellectual Property Law attorney in IBM’s Storage Division and Litigation group, as IP Law Counsel in IBM Software Group, as Assistant General Counsel in IBM Asia/Pacific, IBM Corporate Counsel and as Assistant General Counsel prior to his current position.

This is sure to be a blow to Gene Quinn, of IPWatchdog, who nominated Alfred E. Neuman for PTO Director.  Gene’s rationale:

A character like Al Neuman would be perfect because he wouldn’t (and couldn’t) get in the way of the progress being made by the quite able members of the PTO senior management team who are doing what is necessary to move the PTO forward.  Amazing what can be accomplished without having the watchful eye (and meddling) of a political appointment.

The Coalition for Patent Fairness (CPF) has already issued the its statement regarding the nomination of Kappos as Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office:

The PTO has an important role to play in fostering an economic environment that promotes American innovation and global competitiveness, spurs new product development and creates jobs here in the United States. As leading U.S. patent holders, we look forward to the opportunity to work with Mr. Kappos in helping the PTO fulfill that important responsibility. We support President Obama’s call for reforms to the US patent system that will spur innovation and job creation.

The IAM Blog thinks Kappos is good news for the USPTO and the wider IP community:

For my part, I think he will do an excellent job. He knows the issues; he has a strong IP background; he comes from an industry in which IP is hugely important; he knows all the major players; he has long management experience; and he thinks deeply about IP and its role in society. Frankly, I cannot think of anyone better to do the job. He is not perfect, but who is? President Obama has made a good choice.

Dennis Crouch at Patently-O is excited:

As someone who writes daily about US Patent Law, I am excited about the Kappos nomination because he is likely to open access to previously hidden data and information.  He will also work to create systems that work and measures that are meaningful.

I suspect that the biggest challenge for Mr. Kappos will be moving beyond the unique IBM perspective. Big Blue is an atypical patent owner in its internal systems, patenting volume, and licensing power. As I discussed earlier, it will be important for him to spend time understanding how the rest of the patent community operates.

Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood gave Kappos a thumbs up:

We believe Mr. Kappos will bring a thoughtful perspective to the Department of Commerce and the USPTO.  He has a long history of industry experience, providing a point of view and insights we have always thought to be highly valuable in this position.  He also has a demonstrated track record of managing a large organization, and a true appreciation for industrial innovation.

As a prominent and respected member of the patent community, Mr. Kappos brings much goodwill to this position.  We look forward to working with him and his leadership team over the coming years.

The Patent Prospector questions the nomination given that IBM has submitted some questionable patent applications (citing its 2009/0119,148 application for “enhancing productivity,” which appears to claims claims using shorter hours to facilitate shorter meetings):

President Obama announced today nominees for two related governmental posts: Director, Office of Civilian Radioactive Waste Management, Department of Energy; and Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Warren F. “Pete” Miller, Jr., a part-time Professor at Texas A&M University, got the easier job. Managing the real radioactive waste went to David J. Kappos, who, as long-time corporate mook, has shaped IBM patent policy, publicly spouting horse hockey in the process. People have been known to rise to a position, garnering dignity. Let’s hope these boys are up to the job of containing the waste.

Today’s article looks at the life and practicalities of the Australian Innovation Patent system.

Filing

An innovation application can also be filed as a Paris Convention application, for example as an application claiming priority from a US provisional or non provisional utility application, or as a stand alone application, thus establishing its own priority date, filing date and term. This is particularly important where the intention is to extend the patent position as described above.

An innovation application may also be filed as a divisional application from a national phase or Convention application. Indeed this is where they tend to find application in the protection of biotech and pharmaceutical inventions.

Formalities check

A formalities check must be undertaken for every innovation patent application after filing.
The formalities check involves ensuring that the administrative requirements for filing an application have been complied with and involves a brief review of the subject matter to ensure that the application does not claim non-patentable subject matter.

If the application passes the formalities check, the Patent Office is required to accept the application. If it does not, the Patent Office will issue an adverse report and provide for 2 months from the date of the report for compliance, after which the application will lapse in the event of non compliance. Where the objection relates to non patentable subject matter, a hearing may be set down.

Exclusions

Relevant to biotech and some pharmaceutical inventions, humans, plants, animals, or biological processes for their generation are expressly recited in the Act as being non patentable subject matter. Otherwise, the full subject matter range — as per Australian standard patents — is available including:

• pharmaceutical compositions
• methods of treatment, diagnosis or surgery on living body or otherwise
• compound synthesis and screening
• research tools
• diagnostics

Acceptance and grant

After formalities check, in most cases acceptance and grant will occur practically simultaneously. Upon acceptance, the application is granted by sealing a patent deed and published.  Publication at grant is the first level of publication. Publication at this level is important because it then puts a 3rd party on notice that it can request for the granted patent to be examined, hence opening the door for revocation by the Patent Office or possible opposition (see below).  If an application does not pass the formality check, it will lapse and neither the application nor the invention claimed within it will be published.

Innovation patents, upon grant, are registered. The Register is in two parts, one dealing with standard patents and the other dealing with innovation patents, but is the one “book”. As per below, virtually no rights (an exception appears to be licensing) can be exercised by either the patentee (infringement action) or other parties (revocation or opposition) unless the innovation patent has been certified.

Term

The term of an innovation patent is 8 years from its filing date.  Annuities are payable from the 2nd anniversary. Fees increase to match standard patents from the 5th anniversary.

Where an innovation patent is granted on a divisional application, the term of the innovation patent is calculated from the filing date of the parent patent. So for example, where the parent patent is an Australian national phase application, the term of the innovation patent as a divisional of the National phase application is 8 years from the PCT international filing date.

Examination

(a) Process

Certification of a granted innovation patent is required before infringement proceedings can be brought. Certification requires examination. Only a granted innovation patent can be examined.

The Patent Office must carry out examination if requested to do so by the patentee or a third party. If a third party requests examination, a copy of each examination report is to be sent to that party, as well as the patentee.

The Patent Office may also carry out examination of its own volition.

Generally, examination is to be completed by the latest of 6 months from the date of issuing the first examination report although later dates may apply in special circumstances.

If an adverse report is still relevant in relation to an innovation patent when the period for examination expires, the patent will cease. The Patent Office may also revoke the patent in these circumstances, but this action will not be taken without a hearing on the matter.

(b) Grounds

The grounds of revocation of an innovation patent for invalidity are generally the same as those for examination of a standard patent, except that obviousness is not considered and innovative step is (see below).  The novelty test is the same as for standard patents, i.e. absolute novelty.

As to the conduct of examination, any doubts that the Patent Office may have in relation to grounds other than novelty and innovative step must be resolved in favor of the patentee. For novelty and innovative step, the Patent Office must be satisfied that there are no lawful grounds of objection.

Certification

Certification – involving the issuance of a “certificate of examination” – is the outcome of a favorable examination finding. By this time, grounds for revocation have been found not to exist or to have been removed. If not removed, certification is not possible and the patent must be revoked.
Certification is published and this is particularly important for both the patentee and any potential infringer because:
the patentee can now begin infringement proceedings
a potential infringer may now oppose or seek revocation of the innovation patent.

Opposition and Re-examination

Once an innovation patent has been certified it can be opposed at any time – no time limit applies.  The re-examination procedure is substantially the same as for innovation patents as it is for standard patents.

Amendment

The practice and procedure concerning amendments for innovation patents is substantially the same as for standard patents, except as follows:

• amendments must fall within the scope of the certified claims
• an amendment to convert an innovation patent application to a standard application is allowable if the amendment is filed before grant of the innovation patent application.  It is not allowable if the amendment has been filed after the innovation patent has granted.
• an amendment to convert an innovation patent application to a standard application is not allowable if:  (a)  the innovation patent application is a divisional of an earlier filed innovation patent; and (b) the divisional was filed after grant of the earlier filed innovation patent.
• proposed amendments to the complete specification cannot be allowed until after grant, with the exception of amendments proposed in response to a formalities check.

What is an innovative step?

Prior art for testing innovative step

The prior art for testing for innovative step is the same as that used for testing for novelty. In particular, the following information may be used:

• information made publicly available – in Australia or otherwise- in a single document or through doing a single act;
• information made publicly available – in Australia or otherwise- in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in Australia would treat them as a single source of that information.

The 12 month grace period applies the same as for standard patents.

Test for innovative step

S 7(4) of the Patents Act sets forth the test:  an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in Australia before the priority date of the relevant claim, only vary from the kinds of prior art information in ways that make no substantial contribution to the working of the invention.

To date there has been only one Australian court decision that has considered how the test for innovative step is to be applied. That decision is Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 (13 August 2008).  This is a decision of a trial court. It has not been appealed or followed. In the decision, the Court held that the test involves two separate and discrete steps as follows:

• one first identifies the particular differences between the invention as claimed, and the prior art. This inquiry is to determine how the invention varies from the relevant prior art information. Indeed, if there were no differences, the patent would not be novel and the question of innovative step would not arise.
• the question to be asked, apparently entirely in isolation from any further consideration of or comparison with the prior art information, is whether the integer that gives the claim novelty makes ‘no substantial contribution’ to the working of the invention as claimed. Thus, the focus is on the working of the invention … not the degree or kind of variation from the prior art information. And certainly not on, for example, whether the variation actually means the invention represents an ‘improvement’ or ‘advance’ in some relevant sense compared to what is disclosed in the prior art information.

Some other points from the Delnorth decision are as follows:

• the test of innovative step is different in kind, not just in degree, to the test of obviousness.
• an invention claimed in an innovation patent may be valid even if it is obvious. The converse may also be the case.
• the idea behind s7(4) (see above) seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection.
• where the point of differentiation does contribute to the working of the invention it is entitled to protection, whether or not it is obvious.
• looking at the history of s7(4), the legislative intention seems to have been to introduce into Australia a test based on the requirement that the difference between the invention and what is known is sufficient unless it does makes no substantial contribution to the working of the thing.
• the focus of s7(4) is upon working of the invention as claimed, not to the degree or kind of variation from the prior art. In other words, the variation from the kind of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.
• ‘substantial’ means ‘real’ or of ‘substance’, as contrasted to distinctions without a real difference.

Today’s post is by Guest Barista James Cherry, an Australian patent attorney with Freehills.

The Australian Patent Office has handed down a significant decision in the land down under, which impacts the type of pharmaceutical subject matter that is eligible for term extension. N.V. Organon [2009] APO 8.

According to Section 70 of the Australian Patent Statute, in order to be eligible for an extension of term, either or both of the following conditions must be satisfied:

(a)  one or more pharmaceutical substances per se must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification;

(b)  one or more pharmaceutical substances when produced by a process that involves the use of recombinant DNA technology, must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification.

The “per se” limitation has been held to mean that the claim cannot be limited by reference to how that pharmaceutical substance is made, or by reference to dosage regimes or the like.

“Pharmaceutical substance” is defined in the statute as being “a substance (including a mixture or compound of substances) for therapeutic use…”. There have been several patent office decisions which have considered the meaning of “a substance (including a mixture or compound of substances) for therapeutic use…”.

Before discussing the N.V. Organon case which has just issued, it is worthwhile briefly sketching out the prior landscape:

The first case was LTS Lohmann Therapie-Systeme GmbH & Co KG [2002] APO 12. The subject matter of this case was a transdermal patch. In this case, the Commissioner concluded that, if the claim defined features specifying the “spatial configuration” of the entities within the mixture, then the claim was not directed to a pharmaceutical substance per se. The Commissioner reasoning focused on the fact that, once spatially confined, the substance ceases to be a “mixture”. There has been some criticism of the decision.

The second case was Sanofi-Aventis [2007] APO 35. The subject matter of this case was a bi-phasic controlled-release dosage form. After initial rejection, the Commissioner concluded that the word “compound” must be understood in the sense that it is used within the pharmaceutical industry rather than the narrow meaning in pure chemistry. Hence, the bi-phasic form was a “compound”.

The third case was Euro-Celtique, S.A. [2007] APO 13. The subject matter in this case was a transdermal patch, although the claim did not expressly claim the backing layer and there was some small distinction over the earlier LTS case which did expressly claim the backing layer. Notwithstanding this point of distinction, it was held that the claim was not to a substance per se due to the implied presence of a backing layer.

In the present case, N.V. Organon, the subject matter is a vaginal ring for delivery of steroids. The claim defines a polymer core, in which the steroids are impregnated, and a permeable polymer skin surrounding the core. The critical question was whether such a structure was “a substance (including a mixture or compound of substances).” In following the Sanofi decision, the Commissioner held that “substance” and “compound” should be given broad meanings in order to reflect the statutory intent.

At paragraph 21 of the decision, the Commissioner states that the “spatial configuration” reasoning of LTS “ceases to be persuasive” and is not determinative of the question. The Commissioner held that while “compound”, even in a pharmaceutical context, can be given broad meaning, it was not intended to assist the developers of other therapeutic products or processes including medical apparatus used with therapeutic substances, no matter how innovative and despite also being subject to regulatory approval processes:

pharmaceutical substance (including a mixture or compound of substances) can include a compound with a controlled spatial configuration if, as a whole, it can still be considered a pharmaceutical “substance” but the combination of such a substance with what would reasonably be considered a separate physical device, layer or structure or, from Sanofi, “any purely physical integers” is excluded and indeed would not be a “pharmaceutical substance per se”.

Ultimately, the Commissioner held, at para 23, that the question to be asked is “whether the characteristics of what is claimed more predominantly lies with it being a substance rather than a substance in combination with a separate integer”:

Many pharmaceutical substances involving mixtures of active and other additives can be characterised as a delivery system. What is more important is the actual features of the product claimed. In this case it can be said that the thermoplastic materials in NUVARING have a physical purpose to position, contain and provide for the controlled release of the steroidal components for interaction with the human body. There are also two distinct and adjacent physical layers or regions that differ in composition, that is, the core and skin. I note that the bi-layered tablet considered in Sanofi could be said to have similar characteristics although, in that case, the excipients or additives dissolve in the body and do not retain their structure after the active is delivered. The latter could well suggest that the thermoplastic core and skin are more in the nature of separate physical integers. However, from Dr de Graff’s evidence, the steroidal components in NUVARING are mixed with and necessarily diffuse through the thermoplastic materials in the core and skin regions and as such the product as a whole exhibits a level of integration or interaction between the component parts that, in my view, is more characteristic of a pharmaceutical substance in itself rather than a substance combined with another element or thing.

The Commissioner concluded that one must look to the “level of integration or interaction” when deciding whether the claim is to a substance, or to a substance in combination with a separate integer. In this case, the steroids were impregnated into the polymer core, and therefore the claim was to a substance rather than to a substance in combination with a separate feature.

Practical Implications

The test is now one of “integration” between the active ingredients and the other feature(s). On this basis, it would appear that at least impregnated transdermal patches are now suitable subject matter for an extension. Similarly, impregnated polymer implants are clearly good subject matter. Undoubtedly, there are other similar drug delivery products which are now also suitable for extension of term (e.g. pulmonary delivery, etc).

Kindly provided by Bill Bennett, Pizzeys, Australia.

Mylan Labs cried foul after getting stuck with the tab for almost $1.3 million in translation costs by Daiichi Pharma. A district court said Mylan had to pay under 28 U.S.C. § 1920 and Federal Rule of Civil Procedure 54(d). The U.S. Court of Appeals for the Federal Circuit agreed and said pay up. Ortho-McNeil Pharma v. Mylan Labs (08-1600).

Daiichi owns U.S. Patent No. 5,053,407, directed to an antibiotic compound known as levofloxacin and sold under the trade name “Levaquin.” After Mylan submitted an abbreviated new drug application to the USFDA seeking approval for generic levofloxacin tablets with a paragraph IV certification contending that Daiichi’s patent was invalid, Daiichi sued.

FRCP 54(d) provides that “[u]nless a federal statute, these rules, or a court order provides otherwise, costs . . . should be allowed to the prevailing party.” As the prevailing party in the action, Daiichi submitted to the district court a bill for $2.2 million from Mylan. While it might be generous, Mylan raised numerous objections, including that certain discovery had been conducted jointly for this action and a separate levofloxacin-related civil action against Teva.

After reducing Daiichi’s requested costs by approximately 40% (including most notably a substantial reduction in translation costs awarded), the district court awarded costs, which are summarized as follows:

Fees of Clerk                                                                             $ 75.00
Service of summons & subpoena                               $ 1,676.81
Court reporter fees:
Trial transcripts                                                              $ 31,225.18
Pre-trial hearing transcripts                                         $ 4,924.20
Deposition transcripts                                                 $ 112,911.70
Witness fees                                                                       $ 53,939.94
Exemplification & copying fees                                $ 89,424.20
Interpretation                                                                  $ 24,512.36
Translation                                                        $ 1,011,712.00

Total                                                                               $ 1,330,401.39

On appeal, the Federal Circuit affirmed the award of translation costs for potential trial exhibits, translation costs for privilege log documents, and other costs. The Federal Circuit then looked at the district court’s rejection Mylan’s argument that the joint discovery costs should have been apportioned between this action and the parallel levofloxacin case against Teva.

The court noted that Daiichi’s witnesses were in fact taken jointly by Mylan and Teva, with attorneys for both Mylan and Teva present, and with the captions of both cases on the transcripts. In other words, the depositions were formally taken in both cases. There is also no dispute that the depositions at issue were necessary in both cases. Daiichi even admitted that the New Jersey district court could have assessed the deposition costs, and it acknowledged at oral argument that, had the New Jersey district court done so, Daiichi could not have also recovered those same costs in here, too.

However, costs were not awarded in the New Jersey action against Teva because Daiichi and Teva executed a settlement agreement and “in exchange for Teva agreeing not to appeal the New Jersey district court’s grant of summary judgment [to Daiichi on the issue of inequitable conduct], Daiichi agreed not to seek to recover its otherwise taxable costs in that case.”

Daiichi argued that because it did not in fact receive its costs at the conclusion of the New Jersey action, it was appropriate for the district court here to award all of the shared deposition costs without reduction. Mylan argued that Daiichi could have asked for half of the shared costs when it settled with Teva but waived actual payment of the costs in return for other consideration:  Teva forgoing an appeal.

The Fed Circuit agreed with Mylan’s view that Daiichi would be double-dipping on the cost recovery:

As a general rule, it is well established that in multiparty proceedings before a single judge (as where multiple losing parties are joined in one case, or where multiple cases are consolidated into a single proceeding), the district court has discretion to apportion payment of jointly incurred costs among the losing parties or to invoke the default rule that the losing parties are jointly and severally liable for costs. … Any such award, whether apportioned or awarded jointly and severally, is subject to the usual limitation that the prevailing party may receive only one satisfaction of costs; that is, he “cannot recover more than his total entitlement.”

Had the New Jersey court made an actual award of costs to Daiichi, it would have been impermissible for the district court here to award the same costs. The district court recognized this fact, and Daiichi in fact agreed at oral argument that the same costs could not be awarded in both actions.

We see no basis for treating a settlement situation differently. Here it is apparent that Daiichi has in effect already recovered some amount of costs through its settlement agreement with Teva. Although Teva did not actually pay costs to Daiichi in cash, the taxable costs in the New Jersey action (including deposition costs) were unquestionably taken into account by the parties’ settlement, in which Daiichi agreed not to seek actual payment of costs as consideration for Teva foregoing its appeal. Having recovered the value of those costs in the form of the foregone appeal, Daiichi cannot now recover more than its total entitlement by obtaining those same costs again from Mylan.

Thus, Daiichi cannot have its cake and eat it, too.

The US Patent & Trademark Office has released a beta test of its new web site. The beta site has a cleaner look than the original and should make navigation a little easier.  From the press release:

The new site has been redesigned to improve the look and feel, as well as to enhance the user experience with improved navigation. The USPTO’s goal is to make the Web site technologically up-to-date, user-friendly, and responsive to customer feedback.

Please keep in mind this is the initial release of the beta site and the content is not currently up to date. The Office of the Chief Information Officer (OCIO) is still in the process of migrating and reorganizing the content.

We invite you to explore the beta Web site and give us your constructive feedback. Your comments and suggestions will help us to build a site that better serves your needs.

You can submit your feedback either through a moderator, or send your comments directly to betafeedback@uspto.gov.

Patenting Genes

WAMU Radio Station (88.5 FM) hosted a segment with Rebecca Roberts on patenting  gene-related products. The biotechnology industry says these patents are necessary to spur innovation. Opponents say they actually stifle science. We examine the intersection of cutting-edge genetic research and intellectual property. Guests included Hans Sauer, Associate General Counsel for Intellectual Property, Biotechnology Industry Organization.  You can listen to the segment in Real Audio here. (via Patently BIOtech)

Male Baby Bomb

The Volokh Conspiracy talks about how the one-child policy and preference for boys in China has led to shortages of marriageable women in China, especially in rural areas. In this story, brides are able to extract a bride-price. Volokh notes that in a world with scarcity of women – especially in a world of scarcity of females and yet a cultural preference for male births – the result would be increased treatment of women as property. More valuable property, yes, but increasingly as property precisely as the perception of its value increased.

Gene Patent Fearmongering

The Slate ran an article about the evils of patent human genes.  “Patents are meant to protect inventions, not things that exist in nature like genes in the human body,” quoting Christopher Hansen, an attorney for the American Civil Liberties Union in regards to their lawsuit to have gene patents declared unconstitutional.  The Patent Office estimated that about 52,800 patents have been granted related to genes, fragments of genes, genetic processes and bits of DNA as small as a single letter change in the genetic code.

Handicapping Bilski

IP Law & Business laments that when the Federal Circuit issued the landmark Bilski decision, some folks were ready to call it the death of (most) business method patents, or even software patents—that view may be a bit premature. Even if Supreme Court nominee Sonia Sotomayor joins the court and turn out to be strongly pro-patent, those hoping for stronger limits on what can be patented, there are still a number of way to find a majority.  Several justices have, in other cases, dropped hints about what’s in their minds on this subject.

Organic Farms Under Fire

Organic farmers are wondering if some vague bills introduced both in the House and Senate of the US Congress, a reorganization of America’s agriculture system aimed at tracking and regulating foods for public safety, could endanger organic farms and gardens.  The bills, S.425 and H.R.875, attempt to modernize food safety and regulate and standardize agriculture by creating an agency called the Food Safety Administration, but in the process they could threaten organic farming.

German Court Bans Long Names

The German Constitutional Court upheld a ban on married people combining already-hyphenated names, forbidding last names of three parts or more.  The 1993 law that allows only one hyphen and two last names for married people. Germany’s highest constitutional court upheld the law in the case of the dentist, who wanted to be known as Frieda Rosemarie Thalheim-Kunz-Hallstein. (ABA Journal via Blawg Review editor)

Patent Lawyers at Sea

Co-skippers and fellow patent attorneys, Gary Ropski of Brinks Hofer Gilson & Lione and Leif Sigmond, Jr., of McDonnell Boehnen Hulbert & Berghoff LLP, got third place in the 2009 Patent Cup sailing regatta held May 27-30 at the Yacht Club de Ilhabela, Brazil, located on the island of Ilhabela on the northeast coast of the Brazilian state of Sao Paolo. Who knew?

Trolling For Votes

Polling for Top Patent Blog (by Gene Quinn at IP Watchdog) continues here. In a two-question poll, you can vote for both Favorite Blog and Most Regularly Read Blogs.  If you haven’t voted yet, there’s still time to do so here. Yes, we’re hoping you vote for us.  We’re shameless and you know it.  Or, at least you can find some new blogs for your reading pleasure.