Subject Matter Patentability: To Treat or Not To Treat?

Intellectual Property & Technology Law Journal
December 2019

New York Partner and Chair of Locke Lord’s Intellectual Property Department Alan Clement co-authored an article for Intellectual Property & Technology Law Journal examining the U.S. Court of Appeals for the Federal Circuit’s decision in INO Therapeutics LLC v. Praxair Distribution Inc. According to the authors, the decision “provides an interesting development in the patent eligibility of method of treating patent claims, even though the decision was designated as non-precedential.”

Clement notes “the Federal Circuit’s INO decision opens the door to further subject matter eligibility challenges of method of treatment patent claims that contain routine and conventional steps along with a step that is nothing more than a statement of a natural law along with an instruction to apply the natural law. Practitioners challenging the validity of patents should carefully consider making arguments that the claims at issue recite methods ‘not to treat,’ while those defending patents should assert that the claims recite methods ‘to treat.’”

To read the full article, click here.