Patent Court Accepts Comments 27-Year-Old Ruling May Be Wrong

Ariosa Diagnostics Inc.’s challenge to a 1981 decision by the federal appeals court that hears patent cases got some traction with orders accepting pro-Ariosa briefs, and a request for a response by patent owner Illumina Inc.

Ariosa claims that the 27-year-old ruling by the U.S. Court of Appeals for the Federal Circuit contradicts U.S. Supreme Court precedent. The Patent and Trademark Office relied on the ruling when it ignored the content of a preliminary patent application—known as a provisional application—in reviewing the patentability of Illumina’s later-filed application on the same invention, related to invasive blood tests for pregnant women.

The Federal Circuit’s orders Feb. 28 were in response to Ariosa’s request for a hearing by all 12 members of the court. A court reversal would likely imperil Illumina’s patent. It would also increase the value of filing a provisional applications, potentially incentivizing inventors to file as early as possible.

Ariosa Diagnostics, Inc. v. Illumina, Inc., Fed. Cir., No. 2016-2388, order2/28/18

To contact the reporter on this story: Tony Dutra in Washington
To contact the editor responsible for this story: Mike Wilczek