The ability of life sciences companies to rely on patent protection for diagnostic methods has been eroded over the last ten years, although recent court decisions evidence a rebuilding framework. While courts have consistently invalidated diagnostic methods as lacking patent eligibility, claims re-framed as methods of treatment that include a diagnostic step have recently been deemed to be patent-eligible subject matter. In its recent decision in Illumina v. Ariosa, the Federal Circuit confirmed that another category of claims – methods of preparation – are patent- eligible, providing a new opportunity to cast diagnostic method claims in a patent-eligible light. The Court’s decision offers promise for patent applicants pursuing patent protection for COVID-19 and other diagnostic methods.
Rachel A. Rice
Dr. Rachel Rice applies her doctoral studies in biological sciences to focus her practice on patent prosecution and counseling in the areas of life sciences, biotechnology and pharmaceuticals. She has prior research experience in neurobiology and behavior, molecular biology and cancer biology. Dr. Rice received her J.D., cum laude, from the University of California, Irvine, where she served as president of the Student Bar Association More ›
Karen G Potter
Karen focuses on patent preparation, prosecution, and strategic counseling for start–up, emerging, and established life sciences and biotechnology companies. She advises clients in the development and management of comprehensive patent portfolios that match their scientific and business objectives. Karen also helps identify and evaluate patentability, determine and secure protections worldwide, ensure freedom to operate, and perform due diligence review. Building on her technical expertise in More ›