Patenting Diagnostic Methods: Navigating the Evolving Court Treatment, USPTO Guidance

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Thursday, February 3, 2022 (in 7 days)

1:00pm-2:30pm EST, 10:00am-11:30am PST

or call 1-800-926-7926

This CLE course will guide patent counsel on diagnostic method inventions and the challenges of getting patent protection. The panel will discuss the evolving court treatment of diagnostic patents and the USPTO guidance. The panel will offer best practices for getting patent protection for diagnostic methods.

Description

Diagnostic methods lack patent eligibility, except when they possess some unconventional or non-routine steps. The nebulous nature of what qualifies as unconventional or non-routine has created uncertainty for patent applicants.

Method of treatment claims are patent-eligible, but they must include an affirmative administration step, and the claimed treatment must include specificity and be directed to achieving a specific outcome. Further, in its decision in Illumina v. Ariosa (Fed. Cir. 2020), the court confirmed methods of preparation claims are patent-eligible, providing a new opportunity for patent eligibility of diagnostic method claims.

In view of current guidance from the courts, patent practitioners should avoid typical diagnostic claim language and incorporate a sufficiently inventive concept into the claims, ideally based on unconventional elements or steps.

Listen as our authoritative panel of patent attorneys examines diagnostic method inventions and the challenges involved in getting patent protection for them. The panel will discuss the evolving court treatment of diagnostic patents and the USPTO guidance. The panel will offer best practices for getting patent protection for diagnostic methods.

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Outline

  1. Diagnostic method inventions
    1. Method of treatment claims
    2. Methods of preparation claims
    3. Unconventional/inventive steps
  2. Court treatment and USPTO guidance
  3. Best practices for patenting diagnostic methods

Benefits

The panel will review these and other key issues:

  • How the courts have addressed the issue of patent eligibility for diagnostic methods
  • USPTO guidance for patenting diagnostic methods
  • Best practices for protecting diagnostic methods

Faculty

Mueller, Lisa
Lisa L. Mueller, J.D., B.S.

Shareholder
Casimir Jones

For over 25 years, Ms. Mueller has provided strategic counsel on complex patent issues to clients in the...  |  Read More

Scarpati, Michael
Michael Scarpati, Ph.D.

Partner
Arent Fox

Dr. Scarpati’s practice spans all major areas of intellectual property law, including patent prosecution, due...  |  Read More

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