Takeaways from Carlson Caspers’ Presentation at the 2018 Midwest IP Institute

Last week, Carlson Caspers’ attorneys Caroline Marsili presented a CLE at the 2018 Midwest IP Institute addressing (1) subject matter eligibility under 35 U.S.C. § 101, (2) biosimilar applicants’ use of IPR proceedings and their standing to appeal PTAB decisions, and (3) the CRISPR patent battles.  Slides from this presentation summarizing the state of the law on these issues can be found here.  Some of the takeaways?  First, despite a growing body of case law, Section 101 patent eligibility remains a murky inquiry, leaving plenty of room for advocacy.  Second, the data confirms the somewhat obvious conclusion that IPRs are a powerful tool to help biosimilar applicants to pave the way for market entry earlier in the capital investment timeline.  Whether they have standing to appeal adverse decisions from IPR decisions is an issue set to be resolved soon.  Third, the CRISPR battles wage on, and companies would be wise to continue seeking licenses from the Broad Institute and the University of California given the Federal Circuit’s recent decision affirming that the two parties have claimed different inventions.