Patent Prosecution Update
July 2010

After Bilski:  The USPTO Response and Claim Drafting
The Supreme Court recently announced its greatly anticipated decision in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).  In the decision, the Court held that the machine-or-transformation test is not the sole test for determining whether process claims are eligible for patent protection.  Slip op. at 8.  Instead, the Court found that the machine-or-transformation test remains “a useful and important clue . . . for determining whether some claimed inventions are processes under” 35 U.S.C. § 101.  Id.  More

The EPO Clarifies the “Methods of Treatment by Surgery” Exclusion
Article 53(c) of the European Patent Convention (EPC) excludes from patenting all “methods for the treatment of the human or animal body by surgery.”  Recently, an Enlarged Board of Appeals (Board) of the European Patent Office (EPO) was asked to evaluate the patentability of certain magnetic resonance imaging methods in view of this Article.  In re Medi-Physics, G 0001/07 at 4-10 (EPO Enlarged Board of Appeals 2010).  More

EPO Practice Tip
As reported in the February 2010 edition of “Full Disclosure,” the European Patent Office (EPO) announced a number of changes to the European Patent Convention (EPC) effective April 1, 2010.  The changes included amendments to Rule 161 EPC, which relate to responses to the Written Opinion or the International Preliminary Examination Report (IPER) of a PCT application.  More
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Rule Review

The Federal Circuit Says

Did You Know?

Patents and the Financial Services Industry

4th Annual U.S. Patent Litigation Training Program for Asian Corporations

U.S. Supreme Court Decides Fate of Three Key § 101 Cases

Webinar: What the Bilski Decision Means for Your IP Portfolio


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