Sequenom v. Ariosa: What the PTO Should Do; and Why
The Patent Office should revise its procedures to mandatorily examine any case with a patent-eligibility issue under 35 USC § 101 by, first, requiring the Examiner to make a complete action on the merits as to patentability (§§ 102, 103, 112) and then, if and only if, there is clearly patentable subject matter, a secondexamination at the level of the PTAB should be conducted for patent-eligibility.
The Government in Mayo and Eli Lilly et al in Sequenom: The Sequenom amici Eli Lilly & Co., Eisai Inc., Upsher-Smith Laboratories, Inc., Pfizer Inc., and Etiometry, Inc. present powerful arguments pointing the way to the approach taken in this paper.
Attached is an excerpt from the monograph FIRST TO FILE PATENT DRAFTING as well as the brief of the noted amici.
FirstToFilePatentDraftingApr6EX
Regards,
Hal