The Supreme Court recently held that the personalized medicine methods claimed in the Prometheus patent were not eligible for patenting and asked the Federal Circuit to reconsider whether Myriad’s isolated DNA claims violate the same statute of the U.S. Patent Act (35 USC § 101).
How can personalized medicine and biotechnology companies protect their inventions?
In Prometheus, the Supreme Court addressed the patent-eligibility of personalized medicine methods that were characterized as being based on a law of nature. While the Court invalidated the patent claims at issue, its decision leaves open questions as to how to apply its holding to other cases, and whether it still may be possible to patent methods in the personalized medicine space.
In Myriad, the Federal Circuit addressed the patent-eligibility of DNA isolated from nature that is associated with a particularly aggressive form of breast cancer. While the Federal Circuit upheld the claims, it is not clear whether it—or the Supreme Court—will uphold them again in view of Prometheus. If not, will biotechnology companies have other ways to protect their inventions?
Join us for this 90-minute interactive webinar with Courtenay Brinckerhoff, Partner at Foley & Lardner LLP, to gain a deeper understanding of the recent developments in the patent-eligibility of personalized medicine and biotechnology inventions. Time will be set aside to ask Ms. Brinckerhoff your questions.
Key Take-Aways for Participants:
- Understand the Prometheus decision and what the Supreme Court did and did not say.
- Understand the question at issue in Myriad and how it is similar—and different—from that decided in Prometheus.
- Learn possible patent claim strategies to protect personalized medicine methods and biotechnology inventions under the new paradigm.
- Review the U.S. Patent Office Guidance to Examiners, issued shortly after the Supreme Court decided Prometheus.
- Options for strengthening already granted patents
Time will be set aside at the conclusion of the presentation to ask Ms. Brinckerhoff your questions.
Who Should Attend:
From Pharmas, Biotech companies, Medical Device companies
InHouse Counsel
IP Managers & Directors
IP Counsel
CEOs
Life Science practitioners
IP practitioners
IP Consultants
Patent attorneys
YOUR EXPERT(S):
Courtenay C. Brinckerhoff
Courtenay C. Brinckerhoff is a partner in the Chemical, Biotechnology and Pharmaceutical Practice in the Washington D.C. office of Foley & Lardner LLP, and is Chair of the firm's IP Law and Practice.
Ms. Brinckerhoff’s 20 years of experience counseling clients in evaluating, obtaining, licensing and enforcing patents provide a unique perspective on this rapidly evolving area of law. Ms. Brinckerhoff has represented clients before the U.S. Patent Office, the U.S. Patent Office Board of Appeals and Interferences, and the U.S. Court of Appeals for the Federal Circuit. While Ms. Brinckerhoff works with clients in diverse industries, she has particular experience with biotechnology inventions including those relating to isolated DNA and antibodies, and personalized medicine methods, including companion diagnostic methods.
