BIO IP News Weekly for March 20, 2009

BIO’s weekly newsletter of stories compiled from a variety of public news sources, previously only available to BIO members, is now publicly available: See our temporary version here to check out the news we’re following for March 20, 2009.

US Court of Appeals for the Federal Circuit Issues Decision in Tafas v Dudas

Read the Decision here:

Read BIO’s Comments to the US Patent and Trademark Office on Proposed Rule Changes Concerning Claims Containing Alternative Language:

Monsanto Company: “Protect Innovation”

From Patently-O Blog:

David Snively is Monsanto’s General Counsel. He read Google’s calls for patent reform and penned the following response. Monsanto’s business model relies heavily on its ability to protect its innovations through intellectual property and contract in the US and Globally. Monsanto has also been the defendant in numerous patent battles.”

Monsanto Company is a proud member of BIO. To read their guest post at Patently-O Blog, click here.

HHS Requests Public Comment on Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests

From the Draft Report, located at the website of Office of Science Policy at the National Instutute of Health:

The Secretary’s Advisory Committee on Genetics, Health, and Society (SACGHS) was first chartered in 2002 by the Secretary of the U.S. Department of Health and Human Services (HHS) as a public forum for deliberation on the broad range of policy issues raised by the development and use of genetic tests and, as warranted, to provide advice on these issues. Its mandate includes the following areas of study:

  • Integration of genetic and genomic technologies into health care and public health
  • Clinical, public health, ethical, economic, legal, and societal implications of genetic and genomic technologies and applications
  • Opportunities and gaps in research and data collection and analysis efforts
  • Impact of current patent policy and licensing practices on access to genetic and genomic technologies
  • Uses of genetic information in education, employment, insurance, and law

Public comments are due May 15, 2009.

Burrill Report’s interview with BIO’s President & CEO

Check out the new podcast on patent reform (that’s the blog post link there) from Danny Levine of Burrill & Company at the Burrill Report blog. Here’s part of the summary from Danny:

“This week, leaders in the House and Senate joined to introduce legislation to reform the United State patent system. This follows failed efforts at patent reform in the previous two sessions of Congress. The high-technology industry has long pushed for patent reform, but its efforts have been at odds with the biotechnology and pharmaceutical industries, which are concerned that the legislation would weaken patent protections and consequently cripple their ability to raise capital.”

They say the best way to learn is by stimulating different senses — audio, visual, etc. — so why not listen to the podcast while reading the bills we posted earlier?

Patent reform and Re-examination

Patent reform legislation was introduced in the House and Senate last week.  Over the course of the next few weeks, we will look at specific portions of the legislation and its impact on biotech. Both the House and Senate bill expand re-examination proceedings.

Under the legislation, ex Parte re-examination requests can be based on “prior art consisting of patents, printed publications, or evidence that the claimed invention was in public use or sale in the United States more than 1 year prior to the date of the application for patent in the United States…” (Section 5 of the Senate bill pertaining to Section 301. Citation of prior art).

Moreover, the universe of patents which can be challenged in this manner has been expanded to any patent in force today. Under current law, only patents and printed publication are the basis for re-exam and only for patents filed on or after November 1999.

We ask you to consider:

  • What is the impact of this expansion on biotech patents?
  • What constitutes public use or sale in the context of biotechnology?
  • Are clinical tests performed in public institutions one year prior to the filing of a patent application possible examples of “public use or sale”?

The PDF text of the legislation is available at these links (H.R. 1260) (S. 515).  Let us know your thoughts by responding to our post or emailing

Tomorrow’s Senate hearing on Patent Reform

Tomorrow morning, the Senate Judiciary Committee will hold its first 2009 hearing on patent reform. If you have a minute, learn about past legislative efforts by visiting Read the 5 Fact Sheets about last year’s legislation and take our poll:



To attend the hearing here in DC, or watch the webcast, visit for more information.