Life sciences are much different than electronics, but it's not always easy explaining the nuances to the patent office, Kung said.
Example: One of Kung's clients, Beijing Tang-An Nutrition & Healthcare Products Co. Ltd., had only one U.S. patent for a method that would use cinnamon water extract to lower blood glucose levels in hyperglycemic patients.
The patent was issued in 2001 and, eight years later, it was challenged by a third party through a re-examination request in the U.S. Patent and Trademark Office.
During the re-exam, patent examiners rejected the patent claims as being obvious over prior art submitted by the third party.
Kung, together with Perkins Coie colleague Colin Sandercock from the firm's Washington, D.C., office, filed what would be a successful appeal last year.
Following an oral hearing, the Board of Patent Appeal and Interference reversed the patent examiner's rejection in January - not a common occurrence, Kung said.
"That was the only patent for the company, and they really needed it to be upheld," she said.
The problem is that a lot of examiners don't interpret patent law regarding obviousness correctly, she said.
"Life science is different from electronics, because it's not so predictable," Kung said.
With electronics, for instance, if you add A plus B, she said, the result could be predictable due to common knowledge.
But when it involves drugs for patients, "One cannot predict how a drug will react in a human body," Kung added, "We had experts to present a declaration that this result, from prior art, can't be predicted."
Appeals are expensive, Kung said, but in this case, "We had no options, and had to fight all the way."
- PAT BRODERICK
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