March 24, 2020
Intellectual Property Alert
Intellectual Property Alert
Author(s): Ravinderjit Braich, Ph.D.
Supreme Court denying certiorari in patent eligibility case could signify good news for patentees and applicants.
Recently, the Supreme Court denied several petitions for certiorari in a number of patent eligibility subject matter cases, including diagnostic and treatment methods, from the Federal Circuit. While the denials in these cases do not resolve the uncertainty created by the Alice/Mayo framework, the denial in the Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., No. 18-817 (Jan. 13, 2020) case may be positive news for patentees and applicants. By denying Hikma’s petition for certiorari in Vanda v. West-Ward, the Supreme Court indirectly endorsed the patent eligibility of at least some method-of-treatment claims that rely on an underlying natural law.
Hikma, previously West-Ward Pharmaceuticals, Inc., petitioned for certiorari from the Federal Circuit’s 2018 decision in Vanda in which the Federal Circuit decided that method-of-treatment claims that are directed to particular methods of treatment are patent-eligible even if they rely on an underlying natural law. The Federal Circuit stated that claims were patent-eligible because they were “directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve specific outcome.” The United States Patent and Trade Mark Office (USPTO) issued a memorandum based on the Federal Circuit’s Vanda decision.
By taking into account the Vanda decision and USPTO’s 2018 guidance, applicants can increase their chances for the successful prosecution of method-of-treatment claims that rely on an underlying natural law. For successful prosecution of such claims, applicants are reminded that:
It remains to be seen if Congress will step up and clarify the uncertainty created by the Alice/Mayo framework. Until then, we are left with the Federal Circuit’s interpretation, which can be confusingly contradictory at times.
The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. If you have any questions or require any further information regarding these or other related matters, please contact your regular Nixon Peabody LLP representative. This material may be considered advertising under certain rules of professional conduct.
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