Keeping pace with the ever-changing life sciences industry, Morrison Foerster stays on top of the trends and political, legal, and economic drivers to support striking the balance between innovative discovery and purposeful business planning to assure our clients continued success. MoFo Life Sciences shares timely legal and business insights and in-depth analyses on trends and the complex technologies at the heart of the global pharmaceutical, biotechnology, diagnostics, medical devices, digital health, and AgTech fields.Learn more about our <a href="https://www.mofo.com/capabilities/life-sciences-healthcare" target="_self">Life Sciences practice</a>.<h2 dir="ltr">ABOUT MORRISON FOERSTER</h2>Morrison Foerster is a leading global law firm that transforms complexity into advantage for its clients. Our clients include some of the largest financial institutions, banks, consulting and accounting firms, and Fortune 100, technology, and life sciences companies. Highlighting the firm’s commitment to client service, leadership in market-changing deals and impact litigation, and values-based culture, Morrison Foerster has been repeatedly recognized as one of the top 10 firms on The American Lawyer’s A-List. Year after year, the firm receives significant recognition from Chambers and The Legal 500 across their various guides, including Global, USA, Asia‑Pacific, Europe, UK, Latin America, and FinTech Legal. Our lawyers passionately care about delivering legal excellence while living our values. Morrison Foerster has a long-standing commitment to creating a culture that respects and celebrates differences, while providing an inclusive environment. The firm has achieved Mansfield Certification Plus since 2018 as a result of successfully reaching at least 30 percent women, communities of color, and LGBTQ+ lawyer representation in a notable number of current leadership roles and committees. The firm also has a long history of commitment to the community and society through providing pro bono legal services, including litigating for civil rights and civil liberties, improving public education and fostering the wellbeing of children, advocating for veterans, promoting international human rights, enforcing the right to asylum, and safeguarding the environment.

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Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. She represents clients ranging from large international pharmaceutical companies to midsized companies, startups, and universities.Meghan has filed numerous Patent Term Extension applications to secure additional term for her clients’ patents, which cover FDA-approved products. In addition, Meghan has extensive experience addressing complex obviousness-double patenting and subject matter eligibility issues impacting her clients’ patent portfolios. Meghan also represents clients in both investor-side and target-side due diligence, in deals from seed funding to initial public offerings.Prior to law school, Meghan attended graduate school at the University of California, Los Angeles, where she received a Ph.D. in biological chemistry based on her work on protein-protein and protein-DNA interactions at a molecular level. Meghan is the author of several scientific publications and has presented her research at international conferences.Meghan received her J.D. from the University of Southern California Law School and spent a year as a visiting student at Santa Clara University, where she focused on intellectual property.

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Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants.

Meghan Poon

Wolfgang advises clients on contentious and non-contentious matters involving their most valuable intellectual property assets in life sciences, digital, and high-tech industries.His subjects of focus include research and development collaborations, complex licensing agreements, and other technology transactions, as well as know-how protection strategies, and employee invention law. He also has substantial experience in litigating patents, trademarks, and other intellectual property assets, often in a multijurisdictional context. In addition, Wolfgang and his team frequently clear trademarks and ad campaigns and prosecute trademark applications.Wolfgang is co-editor of our <a href="https://lifesciences.mofo.com/" dir="ltr" target="_blank">MoFo Life Sciences Blog</a>.Wolfgang is a partner of Morrison Foerster based in our German office in Berlin.<h4 dir="ltr">Representative Transactional Matters</h4><ul dir="ltr"><li>U.S.-based BioTech fund on various research collaborations and other transactions with German start-ups or research institutions.</li><li>Negotiate multimillion-euro strategic partnership between two AgTech leaders concerning the development and commercialization of pest-resistant transgenic traits.</li><li>Craft global multi-million collaboration regarding AI-powered robotic MaaS.</li><li>UK-based digital health company on product roll-out of RPM applications in Germany; coordinate international expansion.</li><li>Advise numerous German start-ups on their U.S. expansion.</li><li>Draft diverse global patent and know-how license agreements in the areas of AgTech and life sciences—including gene licensing and licensing of genome editing technologies (e.g., CRISPR)—and medical devices; draft correlating supply and distribution agreements.</li><li>Structure IP rights in connection with joint ventures and other M&A transactions, including the carve-out of a patent-heavy semiconductor business comprising nine jurisdictions into a German–U.S. joint venture.</li><li dir="ltr">Advise on government-funded, multi-partner R&D projects and/or R&D projects with academic institutions, as well as on employee invention law.</li></ul><h4 dir="ltr">Representative Contentious IP Matters</h4><ul dir="ltr"><li>Lead counsel in an international dispute between software companies on rights and obligations following termination of a multi-million licensing and distribution arrangement; coordinate local counsel.</li><li>Defend Japanese chip manufacturer in high-profile SEP-litigation; advise on global settlement arrangement.</li><li>Represent leading internet retailer in patent infringement and concurrent invalidity proceedings in the context of a multijurisdictional dispute concerning touch-screen technology.</li><li>Represent diverse pharmaceutical and life sciences companies in national and cross-border patent infringement proceedings and other technology-related disputes, including preliminary injunctions as well as pre‑trial discovery and inspection proceedings, concerning, inter alia, drug-coating technologies, toner cartridges, medicinal gases, transgenic plants, and vaccines.</li><li dir="ltr">Conduct trademark, copyright, and false advertising litigation, including, most notably, a high-profile trademark litigation for a German bank, and a nine-country cross-border trademark litigation involving a famous pharmaceutical brand.</li></ul>

Dr. Wolfgang Schönig berät Mandanten zum Schutz des geistigen Eigentums sowohl in streitigen als auch nichtstreitigen Angelegenheiten, mit einem besonderen Fokus auf die IP-rechtliche Beratung von Unternehmen aus den Bereichen Life Sciences, Digitalwirtschaft und High-Tech.Zu seinen Beratungsschwerpunkten gehören Forschungs- und Entwicklungskooperationen, komplexe Lizenzvertragsgestaltungen und andereTechnologie-Transaktionen, sowie Know-how-Schutz-Strategien und das Arbeitnehmererfinderrecht. Er verfügt zudem über umfangreiche Prozesserfahrung zur Durchsetzung von Patenten, Marken- und anderen IP-Rechten, häufig auch in einem grenzüberschreitenden Kontext. Darüber hinaus bewertet Dr. Wolfgang Schönig zusammen mit seinem Team regelmäßig die Rechtskonformität von Werbekampagnen, prüft die Verfügbarkeit von Marken und entwickelt entsprechende Anmeldestrategien.Dr. Wolfgang Schönig ist Co-Editor des Life Sciences Blogs von Morrison Foerster.Er hat seinen Doktortitel an der Heinrich-Heine-Universität Düsseldorf und seinen LL.M. an der Fordham School of Law in New York erworben, jeweils mit Schwerpunkt im gewerblichen Rechtsschutz. Seinen MBA-Abschluss erhielt er von der European University in Barcelona.Dr. Wolfgang Schönig ist Partner des deutschen Büros von Morrison Foerster in Berlin.<h4 dir="ltr">Repräsentative Transaktionen</h4><ul><li dir="ltr">BioTech-Fonds mit Sitz in den USA bei verschiedenen Forschungskooperationen und anderen Transaktionen mit deutschen Start-ups oder Forschungseinrichtungen</li><li dir="ltr">Verhandlung einer hochvolumigen strategischen Partnerschaft zwischen zwei Technologieführern im Bereich Crop Science betreffend der Entwicklung und Kommerzialisierung von bestimmten Resistenzen</li><li dir="ltr">Gestaltung einer globalen Multi-Millionen-Zusammenarbeit für KI-gestützte Roboter</li><li dir="ltr">Ein in Großbritannien ansässiges Unternehmen für digitale Gesundheit bei der Markteinführung von RPM-Anwendungen in Deutschland; Koordination der internationalen Expansion</li><li dir="ltr">Beratung zahlreicher deutscher Start-ups bei deren US-Expansion</li><li dir="ltr">Strukturierung und Verhandlung diverser Patent- und Know-How-Lizenzen in den Bereichen Ag Tech und Life Sciences – einschließlich Fragen zu genome editing wie CRISPR-Medizingeräte, sowie Gestaltung von Softwarelizenzverträgen und Erstellung korrespondierender Liefer- und Vertriebsvereinbarungen</li><li dir="ltr">Strukturierung von IP-Rechten im Zusammenhang mit Joint Ventures und anderen M&A-Transaktionen, darunter die Koordination eines neun Länder umfassenden IP Carve-Outs im Rahmen eines Halbleiter-JVs</li><li dir="ltr">Beratung zu staatlich geförderten Multi-Partner F&E-Projekten und/oder F&E-Projekten mit akademischen Einrichtungen sowie zum Arbeitnehmererfindungsrecht</li></ul><h4 dir="ltr">Repräsentative IP-Streitigkeiten</h4><ul><li dir="ltr">Lead Counsel in einem internationalen Rechtsstreit zwischen Softwareunternehmen über Rechte und Pflichten nach Beendigung einer millionenschweren Lizenz- und Vertriebsvereinbarung; Koordinierung der lokalen Anwälte</li><li dir="ltr">Verteidigung eines japanischen Chipherstellers in einem prominenten Streitfall bezüglich Standardessentieller Patente (SEP); Beratung zu einer globalen Vergleichsregelung</li><li dir="ltr">Verteidigung einer führenden Internetplattform gegen Ansprüche eines Patenttrolls wegen vermeintlicher Verletzung von Patent bezüglich Touchscreen-Technologie sowie korrespondierende US-Streitigkeiten</li><li dir="ltr">Vertretung von Pharma- und Life Science-Unternehmen in nationalen und grenzüberschreitenden Patentverletzungsverfahren und anderen technologiebezogenen Streitigkeiten, einschließlich einstweiliger Verfügungsverfahren und vorprozessualer Beweissicherungs- und Besichtigungsverfahren, unter anderem in Bezug auf Arzneimittelbeschichtungstechnologien, Tonerkartuschen, medizinische Gase, transgene Pflanzen und Impfstoffe</li></ul>

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Wolfgang Schönig is a partner of Morrison Foerster (International) LLP based in our German office in Berlin. His practice specialty is advising on IP aspects relative to transactions in, among others, the life sciences, AgTech and pharmaceuticals industry, as well as legal representation in IP disputes. Wolfgang is specialized in research and development collaborations, complex licensing agreements, technology acquisitions, know-how protection strategies, and employee invention law.

Wolfgang Schönig focuses his practice on IP aspects relative to transactions in the digital, telecoms, high tech, life sciences, and pharmaceuticals industry, as well as legal representation in IP disputes.

Wolfgang Schönig advises clients on IP aspects relating to transactions in, among others, the life sciences, AgTech and pharmaceuticals industry, as well as legal representation in IP disputes. His additional focus areas include research and development collaborations, complex licensing agreements, technology acquisitions, know-how protection strategies, and employee invention law.

Wolfgang Schönig

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On March 13, 2025, the Federal Circuit issued a decision in Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc., No. 23-2254 (Fed. Cir. 2025) that clarifies how patent term extension (PTE) is calculated for reissue patents. PTE was established under the Hatch-Waxman Act as a mechanism by which the term of a patent may be extended for up to five years to compensate for delays in obtaining regulatory approval for certain products such as pharmaceuticals and medical devices.<a href="#_ftn1" target="_self">[1]</a> PTE therefore can be an important mechanism for extending exclusivity for valuable products in the life sciences. Notably, the amount of PTE available for any given patent depends upon the issue date of the patent, which is the subject that the Court addressed in this decision.The case involves Merck’s U.S. Patent No. RE44,733 (“the RE’733 patent”), which includes claims directed to “sugammadex,” the active ingredient in Merck’s BRIDION® drug for reversing neuromuscular blockades. The RE’733 patent is a reissue of U.S. Patent No. 6,670,340 (“the original patent”), which included claims directed to sugammadex. The RE’733 patent retains the claims of the original patent and also includes 12 additional, narrower claims directed to sugammadex.<a href="#_ftn2" target="_self">[2]</a> After regulatory approval of sugammadex, the U.S. Patent and Trademark Office (USPTO) awarded five years of PTE to RE’733 based on the issue date of the original patent.<a href="#_ftn3" target="_self">[3]</a>Merck asserted the RE’733 patent against defendant-appellants (collectively “Aurobindo”), who sought regulatory approval to sell generic versions of BRIDION®. Aurobindo argued at trial that the USPTO miscalculated the PTE award of the RE’733 patent in view of the plain text meaning of 35 U.S.C. § 156(c).<a href="#_ftn4" target="_self">[4]</a> 35 U.S.C. § 156(c) provides that:The term of a patent eligible for extension under subsection (a) shall be extended by the time equal to the regulatory review period for the approved product which period occurs after the date the patent is issued…(emphasis added). Aurobindo argued that the plain text of 35 U.S.C. § 156(c) required the USPTO to calculate PTE using the issue date of the reissued RE’733 patent, not the issue date of the original patent.<a href="#_ftn5" target="_self">[5]</a> Under this reasoning, Aurobindo asserted that the RE’733 patent was entitled to only 686 days of PTE, not the five years awarded by the USPTO, and that the term of the RE’733 patent had therefore expired.<a href="#_ftn6" target="_self">[6]</a> The district court interpreted “the patent” in 35 U.S.C. § 156(c) as referring to the original patent, finding that the RE’733 patent was entitled to the five years of PTE awarded by the USPTO.<a href="#_ftn7" target="_self">[7]</a>On appeal, the Federal Circuit agreed with the district court that the RE’733 patent was entitled to five years of PTE based on the issue date of the original patent.<a href="#_ftn8" target="_self">[8]</a> The Court considered the specific context of the use of “the patent” in 35 U.S.C. § 156(c) and the broader purpose of the Hatch-Waxman Act.<a href="#_ftn9" target="_self">[9]</a> The Court reasoned that construing “the patent” as used in 35 U.S.C. § 156(c) as meaning the original patent was the only construction that comported with the purpose of the Hatch-Waxman Act, which is to compensate “patent owners who were actually disabled from benefiting from patent protection during the pendency of regulatory review.”<a href="#_ftn10" target="_self">[10]</a> The Court noted that their decision is consistent with how the USPTO has handled such cases and that Section 2766 of the USPTO’s Manual of Patent Examining Procedure was consistent with this statutory interpretation.<a href="#_ftn11" target="_self">[11]</a>Under the Federal Circuit’s construction, Merck is compensated “for the period of exclusivity lost due to regulatory delay”—the period of time after the original patent issued during which Merck was unable to commercially market BRIDION® due to regulatory review.<a href="#_ftn12" target="_self">[12]</a> Under Aurobindo’s proposed construction of “the patent,” which the court rejected, the calculus should be tied to the issue date of the RE’733 patent, which naturally would occur later than the issue date of the original patent, and therefore would have resulted in less compensation for the period of exclusivity that Merck lost due to regulatory review.<a href="#_ftn13" target="_self">[13]</a>The Federal Circuit held that “in the context of reissued patents, ‘the patent’ in [35 U.S.C. § 156(c)] refers to the original patent that includes claims that are directed to a drug product.”<a href="#_ftn14" target="_self">[14]</a> In this case, the original patent included claims directed to sugammadex, and therefore the patent was entitled to the five years of PTE awarded by the USPTO.Two footnotes in the opinion suggest how courts could address other factual scenarios not raised in the current case. In one instance, the Court commented that if the original patent included claims directed to a drug product subject to regulatory review, and those claims were canceled during reissue, the canceled claims would no longer be PTE eligible regardless of whether they were canceled before or after regulatory review.<a href="#_ftn15" target="_self">[15]</a> In another instance, the Court noted that the case did not address the situation “where the original patent did not include any claims directed to the drug product and was later reissued to include broader claims directed to such product,”<a href="#_ftn16" target="_self">[16]</a> suggesting such situation could turn on factors such as whether the reissued patent was issued before or after regulatory review.The reissue process can be used to strengthen patents by adding additional claims or modifying existing claims. In view of this case, patentees need not per se avoid seeking reissue on patents that may serve as a basis for PTE. However, given the limited factual scenario presented and the suggestion that other scenarios may be treated differently, patentees should use caution in considering the types of claim amendments presented in reissue for patents that may be subject to PTE.<hr class="divider"><a href="#_ftnref1" target="_self">[1]</a> See 35 U.S.C. § 156.<a href="#_ftnref2" target="_self">[2]</a> Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc., No. 23-2254 (Fed. Cir. 2025) at 6.<a href="#_ftnref3" target="_self">[3]</a> Id. at 4.<a href="#_ftnref4" target="_self">[4]</a> Id. at 8.<a href="#_ftnref5" target="_self">[5]</a> Id.<a href="#_ftnref6" target="_self">[6]</a> Id.<a href="#_ftnref7" target="_self">[7]</a> Id. at 8-9.<a href="#_ftnref8" target="_self">[8]</a> See id. at 17.<a href="#_ftnref9" target="_self">[9]</a> Id. at 11-12.<a href="#_ftnref10" target="_self">[10]</a> Id. at 14.<a href="#_ftnref11" target="_self">[11]</a> Id. at 16; see M.P.E.P. § 2766 (“With respect to calculating the amount of extension to which the reissued patent is entitled to receive, so long as the original patent claimed the approved product and the reissued patent claims the approved product, the original patent grant date would be used to calculate the extension to which the reissued patent would be entitled.”)<a href="#_ftnref12" target="_self">[12]</a> Id. at 13.<a href="#_ftnref13" target="_self">[13]</a> See id.<a href="#_ftnref14" target="_self">[14]</a> Id. at 17.<a href="#_ftnref15" target="_self">[15]</a> See id. at Footnote 10 (“If the original patent included claims directed to a drug product subject to regulatory review and the patent owner subsequently cancels those claims, section 156 of course would not apply, whether the cancellation occurred before or after regulatory review. This is because cancelled claims are treated as void ab initio. Fresenius, 721 F.3d at 1346.”)<a href="#_ftnref16" target="_self">[16]</a> Id. at Footnote 11.

Federal Circuit Clarifies Patent Term Extension Calculation for Reissue Patents

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Lisa N. Silverman focuses on patent portfolio management and strategic patent counseling in the areas of chemistry and life sciences. She has extensive experience in securing U.S. and foreign patent p

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Federal Circuit Clarifies Patent Term Extension Calculation for Reissue Patents

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On March 6, 2025, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) issued a precedential decision in <a href="https://www.cafc.uscourts.gov/03-06-2025-23-1762-immunogen-inc-v-stewart-opinion-23-1762-opinion-3-6-2025_2477708/" target="_blank">ImmunoGen, Inc. v. Stewart</a>, in which the court clarified its standards for determining obviousness in the context of a claimed method of treatment involving a specific dosing limitation of a drug, in this case an antibody drug conjugate (ADC).Claims at IssueClaim 1 was considered representative and recites:<ol><li>A method for treating a human patient having an FOLR1-expressing ovarian cancer or cancer of the peritoneum comprising administering to the patient an immunoconjugate which binds to FOLR1 polypeptide, wherein the immunoconjugate comprises an antibody or antigen-binding fragment thereof that comprises the variable light chain (VL) complementarity-determining region (CDR)-1, VL CDR-2, VL CDR-3, variable heavy chain (VH) CDR-1, VH-CDR-2, and VH CDR-3 of SEQ ID NOs: 6-9, 11, and 12, respectively, and a maytansinoid, and wherein the immunoconjugate is administered at a dose of 6 milligrams (mg) per kilogram (kg) of adjusted ideal body weight (AIBW) of the patient.</li></ol>It was undisputed by the parties that a method of using the recited immunoconjugate (also known as IMGN853) to treat FOLR1-expressing ovarian cancer or cancer of the peritoneum was known in the art at the time of filing. As such, whether the claims were patentable from an obviousness perspective turned on whether the recited dosing limitation of “6 mg per kg of AIDW of the patient” would have been obvious to a person of ordinary skill in the art (POSITA) at the time of filing.Key Arguments and Court FindingsImmunoGen first argued that the dosing limitation could not have been obvious because it was not known that IMGN853 caused ocular toxicity in humans. The Federal Circuit acknowledged that “where a problem was not known in the art, the solution to that problem may not be obvious,” but emphasized that “it does not follow that a claimed solution to an unknown problem is necessarily non-obvious.” The court found no error in the district court’s finding that a POSITA, despite being unaware of IMGN853’s ocular toxicity, would have been motivated to monitor for such side effects when administering the drugs to humans. In supporting its finding, the Federal Circuit reasoned that IMGN853 contains a payload (DM4) known at the time of filing to be associated with ocular toxicity.ImmunoGen further argued that a POSITA would not have been motivated to use AIBW dosing as the method to address the problem of ocular toxicity. The Federal Circuit upheld the district court’s findings that a POSITA “would have understood AIBW to be a ‘potential solution for ocular toxicity’ and that it would have been obvious ‘to experiment with AIBW in attempting to eliminate or ameliorate the toxicities associated with IMGN853.” The court noted that AIBW was a recognized methodology at the time of filing, including its use as an approach for mitigating ocular toxicity, which supported the district court’s conclusion.ImmunoGen also contended that although AIBW was a known methodology at the time of filing, it would not have been obvious to a POSITA to apply AIBW to an ADC, “particularly when no ADC had ever been dosed using AIBW before.” The Federal Circuit, however, also again upheld the district court’s finding, explaining that “AIBW dosing, though never used for ADCs, would have been within the range of knowledge of a person of ordinary skill in the art when confronted with dosing-induced toxicities, and particularly when confronted with dosing-induced ocular toxicity.” The court supported its conclusion by noting that the primary prior art reference, which was ImmunoGen’s own patent application publication, disclosed the relationship between the DM4 payload of IMGN853 and ocular toxicity, and also indicated that the dosing regimen “can be determined by the physician.”ImmunoGen additionally argued that it would not have been obvious for a POSITA “to select the claimed dose of 6 mg/kg AIBW with a reasonable expectation of success.” The Federal Circuit, once again, found no error with the district court’s findings on this issue, noting that AIBW can be equivalent to true body weight (TBW) dosing.  Further, the court held that a reasonable expectation of success is present because the primary prior art reference disclosed dosing patients with IMGN853 at “around 6 mg/kg of TBW,” indicating that “for patients who weigh exactly their ideal body weight, a dose of 6 mg/kg AIBW is identical to a dose of 6 mg/kg TBW, which is expressly disclosed as a suitable dose in [the primary prior art reference].” In other words, even though the prior art reference did not mention AIBW dosing, the court determined that the “natural result flowing” from the AIBW dosing would be the same as the prior art for at least this one type of patient, “regardless whether a doctor knew of AIBW dosing.”  The Federal Circuit agreed with the lower court’s concerns over preventing doctors “from practicing what is already disclosed in the prior art for patients at their ideal body weight.”ImmunoGen’s final argument was that even if a POSITA would have been motivated to use AIBW to address ocular toxicity with a reasonable expectation of success, “the district court clearly erred because it ‘did not actually hold that a skilled artisan had a reasonable expectation of success that a 6 mg/kg AIBW dose would solve ocular toxicity,” which they argue is unpredictable.  The Federal Circuit found no error with the district court’s findings on this point, emphasizing that “the obviousness inquiry is generally agnostic to the particular motivation of the inventor.” The court clarified that there is no requirement to demonstrate that a POSITA “would have had a reasonable expectation of eliminating ocular toxicity using a 6 mg/kg AIBW dose,” especially since “the claims are silent as to any ocular toxicity problem.” Instead, the Federal Circuit explained that the inquiry requires only that a POSITA “would have had a reasonable expectation that dosing a human at 6 mg/kg AIBW would have been effective in treating ovarian and peritoneal cancers, as claimed.” The court considered the evidence, including the primary prior art reference, to support such a reasonable expectation of success.Implications and Strategic ConsiderationsWhile each of the arguments presented by ImmunoGen is supported, at least to some extent, by case law and USPTO guidance, this decision elucidates how courts and, by extension the USPTO, may evaluate and potentially limit such arguments. For instance, solving a specific problem not known in the art can provide evidence of non-obviousness; however, recognition of a generalized problem associated with any component of the drug (such as the DM4 payload of IMGN853 known at the time of filing to be associated with ocular toxicity) may weigh against such an argument. Additionally, while a unique dosing scheme not previously associated with a particular class of treatments can suggest non-obviousness, any overlap that necessarily results from known dosing schemes for the same treatment may counter this argument. Finally, while unpredictability of a claimed treatment can suggest non-obviousness when a unique dosing scheme is used, the reasonable expectation of success is determined by the ability to achieve what is specified in the claims.The decision appears to apply a stringent standard for the non-obviousness of dosing regimen claims for known drugs, even in cases where there is unpredictability in the drug or methods of using it.  While unpredictability is generally a significant factor against the enablement of biotechnology claims, in the context of non-obviousness, the case highlights that unpredictability is a less critical factor.Moreover, this decision underscores the importance of crafting claims in alternative ways to potentially reframe an obviousness analysis. For example, if the claims had been directed to a “method of reducing ocular toxicity” rather than a “method of treatment,” the determination of whether there was a reasonable expectation of success might have been different.

Navigating Obviousness: Federal Circuit Addresses Patentability of Pharmaceutical Dosing Methods

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Dr. Jeff Schmidt is a member of the firm’s Patent Group. His practice focuses on patent prosecution in the areas of life sciences, biotechnology, and pharmaceuticals, which includes the preparation an

Jeffrey W. Schmidt Ph.D.

Jeffrey Schmidt

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Karen Potter is a partner in Morrison & Foerster’s Life Sciences Patent group. Her practice focuses on patent preparation, prosecution, and strategic counseling for start‑up, emerging, and established

Karen G Potter Ph.D.

Karen Potter

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Navigating Obviousness: Federal Circuit Addresses Patentability of Pharmaceutical Dosing Methods

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This post is part of MoFo’s 2025 Intersection of AI and Life Sciences blog series. In this blog series, we explore how artificial intelligence is revolutionizing research, innovation, and patient care in the life sciences. Stay tuned for expert insights regarding the impact of AI on intellectual property, licensing, contracts, regulatory policy, enforcement, privacy, and venture markets in life sciences.Discovering and developing new drugs is extremely expensive. Bringing a new drug to market can cost over $1 billion and may take many years. To improve the efficiency of drug discovery and development, approaches in artificial intelligence (AI) are proving particularly useful. As AI tools become ever more powerful, they are being used to identify new biological targets for treating disease, predict drug efficacy and toxicity, discover novel compounds using structure and ligand-based drug design, screen datasets for drug repurposing, and more. For example, last month, Google announced the launch of its AI co-scientist tool and explained how it <a href="https://research.google/blog/accelerating-scientific-breakthroughs-with-an-ai-co-scientist/" target="_blank">applied the AI co-scientist tool to assist with prediction of drug repurposing candidates that were subsequently validated as inhibiting acute myeloid leukemia (AML) tumor viability</a>.As the use of AI assistance in drug discovery processes proliferates, it will continue to raise important questions regarding AI-assisted inventorship and patentability. In this post, we discuss key considerations regarding inventorship for patents directed to drugs that are discovered and developed with the assistance of AI. As set out below, patents can be filed for AI-assisted discoveries so long as a human inventor made a significant contribution to the invention. When using AI tools in drug discovery, innovators are encouraged to document where significant human contributions to the process have been made – whether at the AI configuration stage, the hypothesis generation stage, or the drug candidate validation stage. BackgroundIn the United States—and in most major patent jurisdictions throughout the world—a patent may only be awarded to a human inventor. While the advent of powerful AI platforms led to a renewed interest in whether AI systems can themselves be named as inventors on patents, the U.S. Federal Circuit clarified in 2022 that “only a natural person can be an inventor, so AI cannot be” (Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022)). However, the Thaler decision left open the question of whether and to what extent an AI system may assist in inventorship of a patent application that validly names a human inventor.To attempt to address this open question, the U.S. Patent and Trademark Office (USPTO) <a href="https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions" target="_blank">issued guidance in February 2024</a> regarding the patentability of inventions made with AI assistance. In short, the USPTO has taken the position that “the use of an AI system by a natural person(s) does not preclude a natural person(s) from qualifying as an inventor (or joint inventors) if the natural person(s) significantly contributed to the claimed invention.” 39 Fed. Reg. at 10047. Which human contributions are “significant” in AI-assisted drug discoveryDetermining what constitutes a “significant” contribution could, in some instances, be a difficult question. To determine if a contribution by a human inventor is “significant,” the USPTO pointed to the factors from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998) for determining inventorship. The Pannu factors require that an inventor:<ol><li>Contribute in some significant manner to the conception or reduction to practice of the invention;</li><li>Make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and</li><li>Do more than merely explain to the real inventors well-known concepts and/or the current state of the art.</li></ol>The USPTO seemed to recognize that the determination of “significant” human contribution to an AI-assisted invention may be particularly important—and perhaps particularly difficult—in the AI-assisted drug discovery field. To this end, the USPTO <a href="https://www.uspto.gov/initiatives/artificial-intelligence/artificial-intelligence-resources?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=" target="_blank">provided examples</a> of what human contributions might (and might not) constitute a significant inventive in the field of AI-assisted drug discovery.Assessing significant human contribution to AI-assisted drug discoveryBased on the USPTO’s examples of valid and invalid human inventorship in hypothetical AI-assisted drug discovery scenarios, it appears that the USPTO believes there are a few distinct paths to preserving patent eligibility of AI-assisted drug discovery inventions:1. Recognizing a problem to be solved and constructing a sufficiently specific prompt for an AI system in view of that problem.The USPTO guidance outlined that a significant contribution to an invention could be shown by constructing a prompt for an AI system in view of a specific problem, to elicit a particular solution. In the context of drug discovery, the USPTO provided an <a href="https://www.uspto.gov/sites/default/files/documents/ai-inventorship-guidance-chemical.pdf" target="_blank">example</a> in which a researcher significantly contributes to a drug discovery invention by selecting a target for a therapy, identifying relevant datasets and sequences to use as inputs for an AI system, determining structural modifications to the resulting compounds to improve activity, and synthesizing the modified compounds. Conversely, the USPTO suggested that a person who “only presents” a problem to an AI system may not be a proper inventor.Based on these guidelines, there certainly remains a gray area between mere presentation of a problem to an AI system, versus construction of a sufficiently detailed AI prompt to elicit a sufficiently particular solution. For example, it is not clear how the USPTO would view a researcher who only selects a target for therapy and identifies relevant datasets and sequences to use as inputs for an AI system, without additionally determining structural modifications or performing wet-lab synthesis.2. Significantly modifying the output of an AI system, going beyond mere reduction to practice.The USPTO guidance suggests that inventorship would be appropriate for a researcher who makes a significant contribution to the output of an AI system. On the other hand, the USPTO highlighted that when the properties and utility of the output are apparent to those of ordinary skill, merely reducing the invention of an AI system to practice may be insufficient to constitute inventorship. According to one <a href="https://www.uspto.gov/sites/default/files/documents/ai-inventorship-guidance-chemical.pdf" target="_blank">USPTO example</a>, researchers who synthesize an AI identified compound with structural modifications that improve activity would qualify as inventors of claims directed to the modified AI-identified compound. The USPTO’s examples do not expressly address a situation in which human researchers attempt to claim an unmodified compound identified by an essentially off-the-shelf AI system. The guidance seems to suggest that a claim directed to the unmodified structure of a new AI identified compound may not, in every situation, have valid human inventorship. However, it is also useful to consider the definition of “conception” of an invention in case law in the chemical arts. The Federal Circuit has recognized that, “[i]n some instances, an inventor is unable to establish a conception until he has reduced the invention to practice through a successful experiment. This situation results in a simultaneous conception and reduction to practice.” Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991) (quoting 3 D. Chisum, Patents § 10.04[5] (1990)). Applicants facing challenges on the basis of inventorship might argue that conception (and thus, inventorship) of even unmodified AI identified compounds requires reduction to practice by synthesis, in order to resolve uncertainties associated with novel chemical structures. 3. Creating or modifying the AI system itself, for example, by designing, building, or training the AI system in view of a specific problem.The USPTO guidance suggests that a significant contribution can come from a person developing an essential building block of the AI system. This can include designing, building, or training the system in view of a specific problem. Thus, researchers should be aware that the mere use of an off-the-shelf AI system may be insufficient to establish inventorship without other significant contributions (e.g., downstream modification of the output from the AI system as described in guiding principle 3), while specific configuration or fine-tuning of a special purpose AI system for drug discovery may be sufficient to establish inventorship of drugs subsequently discovered using said special-purpose fine-tuned AI systems.Future questions and practice tipsAs AI tools continue to become more powerful, researchers in the AI-assisted drug discovery space seeking to establish patent protection should be aware of the requirement for significant human contribution to inventorship. It may also become increasingly important to consider differences between therapeutics that may be identified with the assistance of AI. For example, applicants might argue that there are inherent differences in predictability for different therapeutics, such as for small molecules versus for antibodies, and that the standard required for “significant” contribution via subsequent experimentation may thus vary accordingly.In light of open questions regarding inventorship for drugs discovered with AI-assistance, innovators may consider the following practice tips:<ul><li>Structure workflows and experiments to involve significant human contribution using the current guidelines;</li><li>Ensure that there is meaningful human participation in either:</li><ul><li>The process of how drug candidates are identified (e.g., modifying the AI system, training specialized AI platforms); or</li><li>The subsequent validation of the AI-identified drug candidates in the lab (e.g., structural modification, experimentation for a specific functionality or use, further optimization for efficacy and toxicity); and</li></ul><li>Record all human contributions when implementing an AI-assisted approach for drug discovery, in the context of the subject matter for each claim of a resulting patent application.</li></ul>

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Caressa Tsai Ph.D.

Caressa Tsai

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Of Counsel

Josh Crawford's practice focuses on domestic patent prosecution, international patent portfolio management, patent infringement and validity determinations, inter partes review proceedings, and IP lit

Joshua A. Crawford

Joshua Crawford

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. 

Navigating Inventorship in the Era of AI-Assisted Drug Discovery

Earlier this month, the Federal Circuit decided a subject matter eligibility case closely watched in the pharmaceutical industry. The case involved composition-of-matter claims reciting measured results. Reversing the decision below, the court ruled that the claims were directed to concrete structures, not patent-ineligible abstract ideas.US Synthetic’s PatentThe case concerns composition-of-matter <a href="https://patents.google.com/patent/US10508502B2/en?oq=10%2c508%2c502" target="_blank">claims</a> on “a polycrystalline diamond compact” for diamond drill bits. The claims recite structural components (including “a plurality of diamond grains exhibiting an average grain size of about 50 μm or less; and a catalyst including cobalt”) and magnetic properties (including “coercivity of about 115 Oe to about 250 Oe”) of the composition. The specification notes that these magnetic properties “may be correlated” with the amount of metal catalyst present in the composition and the extent of diamond-to-diamond bonding.ITC decisionThe ITC ruled that the claims were ineligible under 35 U.S.C. § 101. The ITC relied in part on language from the Federal Circuit’s 2020 <a href="https://casetext.com/case/am-axle-mfg-inc-v-neapco-holdings-llc-6" target="_blank">American Axle v. Neapco Holdings</a> decision, that claims must not just state functional results but must also “identify ‘how’ that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness.” The ITC did not view the magnetic properties in US Synthetic’s claims as sufficiently tied to structure. And so it considered the claims to be directed to the mere “abstract idea of [polycrystalline diamond compacts] that achieve . . . desired magnetic . . . results.”The ITC’s decision attracted attention because of its potentially broad implications for life sciences. Biotechnology and pharma products are often protected by composition-of-matter patents with limitations reciting functionality or other measured properties of the compositions. The Pharmaceutical Research and Manufacturers of America (“PhRMA”) filed an amicus brief in the appeal, characterizing the ITC’s decision as a “troubling expansion of the abstract idea exception to patent eligibility.”Federal Circuit decisionThe Federal Circuit reversed, in an <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1217.OPINION.2-13-2025_2467516.pdf" target="_blank">opinion</a> authored by Judge Chen. The court explains that the claims are “directed to a specific, non-abstract composition of matter” with several recited structural elements in addition to magnetic properties. The opinion emphasizes that “the specification explains how the claimed magnetic properties correlate to structural aspects of the claimed” composition. The court rejects the ITC’s “apparent expectations for precision between the recited properties and structural details of the claimed composition.”The opinion contextualizes the American Axle decision. American Axle had raised eyebrows by applying Section 101 precedents outside the computer context, invalidating claims to a mechanical invention described in largely functional terms. There, the panel emphasized that the claims were drawn to a functional result and lacked “any physical structure or steps for achieving the claimed result.” The US Synthetic panel rejects the ITC’s arguments based on American Axle and clarifies that “no perfect proxy is required between the recited material properties and the structure.”Then the opinion goes on to distinguish computer claims directed to software functionality. Whereas “information as such is an intangible” that is not made eligible by the addition of “generic computer functionality,” the claimed composition “is a physical composition of matter defined by its constituent elements, dimensional information, and inherent material properties.” Again, the court focuses on how the magnetic properties “are integrally and necessarily intertwined with the structure of the” composition.TakeawayThe US Synthetic decision reassures us that composition-of-matter claims are unlikely to be found ineligible under Section 101 as abstract ideas—at least as long as any recited function is supported by disclosures linking function to structure.Of course, biotechnology composition/product claims can still be ineligible, but more commonly under other the natural products exception, as in the 2013 Supreme Court decision <a href="https://casetext.com/case/assn-for-molecular-pathology-v-myriad-genetics-inc-5?" target="_blank">Association for Molecular Pathology v. Myriad Genetics</a>. We are watching another natural products case making its way through the Federal Circuit, <a href="https://dockets.justia.com/docket/circuit-courts/cafc/24-1408" target="_blank">REGENXBIO Inc. v. Sarepta Therapeutics, Inc.</a> That case is an appeal from a District of Delaware ruling that host cells containing adeno-associated virus gene sequences are ineligible natural products.

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Rebecca Weires is an associate in Morrison Foerster’s Intellectual Property Litigation Group. 

Rebecca Weires Setrakian

Rebecca Setrakian

Federal Circuit addresses subject matter eligibility for compositions of matter in US Synthetic v. ITC

This post is part of MoFo’s 2025 Intersection of AI and Life Sciences blog series. In this blog series, we explore how artificial intelligence is revolutionizing research, innovation, and patient care in the life sciences. Stay tuned for expert insights regarding the impact of AI on intellectual property, licensing, contracts, regulatory policy, enforcement, privacy, and venture markets in life sciences.A core strategic question facing life sciences companies developing novel AI-implemented methods is whether to file for patent protection or to keep the methods as trade secret.One successful approach is to develop a hybrid strategy for patents and trade secrets based on current and future company goals, following the considerations outlined below.The Basics: Patents and Trade SecretsPatents protect new, useful, and non-obvious inventions. Life sciences companies can pursue patents to cover, for example, AI-based algorithms, AI-based devices, or drugs developed by AI. In the United States, patent applications become publicly available 18 months after filing and granted patent protection lasts 20 years from the earliest non-provisional filing date. To obtain patent protection globally, companies need to file and prosecute patents at various patent offices, which increases the costs associated with obtaining patent protection.Trade secrets protect confidential information that derives value by virtue of not being publicly known. Life sciences companies may choose to keep software code and other specific aspects of AI-based methods confidential. Unlike patents, protections associated with trade secrets are indefinite as long as reasonable efforts are made to maintain secrecy. Life sciences companies may take reasonable efforts to protect trade secrets by implementing internal trade secret policies.Considerations:Deciding whether to file a patent application or maintain a trade secret for AI-enabled life sciences inventions involves weighing business and legal considerations.AvailabilityAs an initial matter, the requirement to maintain trade secrets as confidential means that trade secret protection is simply not available for some life sciences applications of AI. Technologies that are inherently exposed to the public cannot be kept as a trade secret. For example, a graphical user interface cannot be kept as trade secret, but may be patentable. On the other hand, assays used to select a lead compound from an AI-generated list and methods of manufacturing the compound identified by AI may be kept as trade secrets or, alternatively, may be patented.EnforceabilityTrade secret protection cannot protect against independent development by another entity or reverse-engineering. Even when trade secret protection does apply, trade secret protection can be hard to enforce because a trade secret owner must show that a third party improperly acquired or improperly disclosed the information despite the owner’s reasonable efforts to maintain secrecy. Thus, the chain of information transfer from the holder of the trade secret rights to a third party is a key element for a potential enforcement suit. In comparison, enforcing a patent requires the patent holder to show a competitor is merely practicing the invention covered by at least one claim of the patent holder’s valid patent. Under patent law, how the potential infringer acquired knowledge of the invention is irrelevant. At the intersection of life sciences and AI, the risk of independent development or reverse-engineering may be high if multiple companies are relying on publicly available data to train models.Freedom to OperateEven if a company does not plan to offensively use patents by suing infringers, patents create prior art for third parties and can thus prevent third parties from patenting their own IP on the technology. Thus, filing for patent applications may create public disclosures that ensure later developments by third parties cannot as easily prevent an earlier party from continuing to practice and innovate in the space. On the other hand, if patents are not filed by the earlier innovator, and all IP is kept as trade secret, then a third party who independently develops the same technology and files for patent protection may be able to prevent the first company from practicing the invention or from continuing to effectively innovate in the space.Business Model and Demonstrating InnovationThe company’s business model plays a role in patent protection and trade secret protection decisions. Some AI-enabled life sciences companies innovate and generate revenue through partnerships and/or licensing of AI discovery platforms. The key innovative functionalities of the platform may be disclosed to partners or licensors, making them ineligible for trade secret protection.Other AI-enabled life sciences companies develop and use AI platforms for drug discovery but ultimately plan to manufacture and sell the drugs themselves. For these companies, patent filings can be an important mechanism for demonstrating innovation to investors. Demonstrating innovation through patent protection for a platform may be particularly important at early stages of a company when product development may take additional time.Takeaways:Life sciences companies using AI often have evolving business models. For example, the company may begin with platform technology for discovery and then evolve into products that can be licensed, manufactured, and sold. We recognize that the balance between both IP types may shift as the business strategy changes and hybrid approaches should be considered.One strategy is to file for patents to cover high-level algorithms and the practical applications of their AI methods, while relying on trade secret protection for low-level implementation details, model finetuning, and optimization before products are developed and sold. These early patents can be used for licensing the platform or to demonstrate innovation to investors. At later stages of development, it may be advisable to apply for patents covering revenue-generating products and to keep new developments to the platform, although patent-eligible, as trade secret. By developing patent practitioner teams with experience in life sciences and in technology, we are able to set life sciences companies up for success early and work with them as they grow.

Patents and Trade Secrets in AI and Life Sciences

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Briana’s practice focuses on patent preparation, prosecution, and counseling in the areas of biotechnology, pharmaceuticals, and artificial intelligence.

Briana Erin Mittleman Ph.D.

Briana Mittleman

Patents and Trade Secrets in AI and Life Sciences