Prosecution Group Luncheon Patents August, 2011

The Disk is Only As Good As the Software CyberSource Corp. v. Retail Decisions, Inc. (Fed Cir. 2011) Method claim: anti-fraud process for online credit card purchases –Claim 2: a "computer readable medium containing program instructions" for causing a computer to perform that method FC: “Computer-readable medium” with ineligible process is not a patent-eligible product –Method is an unpatentable mental process standing alone –Claim 2 is "nothing more than a computer readable medium containing program instructions for executing the method" –Court turned away from literal statutory category (article of manufacture), toward "underlying invention" –Patentee unable to show that “computer readable medium” was fundamentally different from method

But Isolated DNA Is Eligible Assn. for Molecular Pathology v. Myriad Genetics (FC 2011) District court invalidated claims to isolated naturally- occurring DNA material FC: Reversed invalidity of claims to screening cancer treatments via changes in cell growth rates Reversed invalidity of claims directed to isolated DNA Dissent: process of isolating genetic material does not make that material a patentable invention En banc petition or petition for cert. expected

Ombudsman Program Made Permanent To assist applicants with issues that arise during prosecution, especially when there is a breakdown in the normal process –Status inquiries –Petitions issues To provide a channel for resolving issues that may not fit into existing channels

Milestones Patent No. 8,000,000 Second Sight Medical Products Visual Prosthesis 5½ years since 7,000,000 (Feb. 2006) 6,000,000 in Dec. 1999