Finnegan attorneys Jennifer H. Roscetti and Erin M. Sommers participated in Managing Intellectual Property's European Life Sciences Forum, where they discussed patent eligibility and Section 101 in the United States, as well as inter partes review (IPR) proceedings in the life sciences industry.
They discussed tips for developing your claim and suggested learning from past Federal Circuit cases (such as Genetic Technologies v. Merial), particularly if "in looking at your claim, the patent office or a defendant in litigation can argue that your claim elements start and end with natural law of natural phenomenon and nothing more. Considering that law, if you have these methods that are routine in nature, they are likely to end up being ineligible subject matter." They also addressed the importance of communicating with the patent examiner to understand what you need to add to your claim for it to be considered eligible subject matter. Lastly, Roscetti and Sommers discussed the growing rate of biotech and pharmaceutical patents being challenged at the Patent Trial and Appeal Board (PTAB) and the potential impact of Oil States Energy Services LLC v. Greene's Energy Group, a case set to be heard by the U.S. Supreme Court that challenges the constitutionality of America Invents Act (AIA) proceedings.
