Intellectual Property Report: April 2012

04/26/2012 / Intellectual Property Group



In the April Issue:

Supreme Court Rejects Patent on Drug Metabolite Correlation in Mayo Collaborative Services v. Prometheus Laboratories, Inc.
By John A. Kvinge

On March 20, 2012, the United States Supreme Court issued its ruling in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012). At issue were two patents covering the use of thiopurine drugs to treat autoimmune conditions such as Crohn’s disease. The Supreme Court concluded that the claims were impermissible attempts to patent a natural law, and held the patents invalid. To read more, click here.


New Generic Top-Level Domain System Expands Internet Addressing Scheme
By Molly T. Eichten

A significant expansion of the Internet is underway. On January 12, 2012, the Internet Corporation for Names and Numbers (ICANN) began accepting applications from parties who wish to own and maintain new generic top-level domains. Familiar top-level domains include .com, .org, .gov, and .net. ICANN’s new generic top-level domain name system will allow any term (with certain restrictions) to be a top level domain – for example, .bank, .yahoo, .apple. The owner of a top-level domain will be responsible for overseeing the technical operation of that portion of the Internet, just as Verisign is responsible for the operations of .com. Because these technical operations will be critical to the stability of the Internet, the application process with ICANN is rigorous and expensive. The application fee is $185,000, the application itself requires a detailed response to 40 pages of questions, and the guidebook to assist with the entire application process is over 300 pages.

Update on the America Invents Act: Cost Considerations Associated with Post-Grant Review
By Ryan C. Smith

As explained in Larkin Hoffman’s January Intellectual Property Report, the new Post-Grant Review (PGR) and Inter Partes Review (IPR) proceedings will broaden a third party’s ability to challenge patent validity. There seems to be a prevailing assumption that both proceedings will be significantly cheaper than bringing an action in district court. This assumption may not be true, however, given the fees associated with initiating a PGR or IPR proceeding.

This article discusses the proposed fees associated with each new proceeding, and the differences in costs between filing third-party submissions (PGR and IPR) and filing a district court action.



Intellectual Property Department Attorneys:

Robert C. Klinger



Ryan C. Smith


John A. Kvinge
Molly T. Eichten

Craig J. Lervick

Glenna L. Gilbert


Jose W. Jimenez

James P. Quinn


This alert is provided as a service to our clients and firm associates. While the information provided in this publication is believed to be accurate, it is general in nature and should not be construed as legal advice.