US Director Review Ruling Shows Vidal’s Willingness To Fix Errors

Director Eldora L. Ellison, Ph.D., was quoted in the article “US Director Review Ruling Shows Vidal’s Willingness To Fix Errors,” published by Managing IP. The article addresses USPTO Director Vidal’s ruling that vacated a decision denying institution of Neurocrine Biosciences’ challenge of a Spruce Biosciences patent. From the article:

“Vidal’s analysis of the written description issues are also a good reminder of how patents can be challenged when they don’t meet the right criteria…

Eldora Ellison, co-chair of Sterne Kessler’s PTAB trials practice in Washington DC, says this [Vidal’s decision] shows that parties that are using functional language – like Spruce did here – may face challenges if their specifications are limited in terms of what they disclose.

‘It’s understandable that a decision like this could be frustrating to patent owners,’ she says.

One takeaway from this case is that applicants should give a representative number of species or try to describe structural features that are common to the members of the genus, Ellison adds.

‘I acknowledge that can be challenging for patent applicants, but that’s the way our case law is shaping up these days.'”