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Laura Smalley
Partner
Harris Beach PLLC
Laura Smalley is a Partner for Harris Beach PLLC where represents and counsels her clients, which include individual inventors, universities, start-up and established companies, in protecting their inventions, particularly in the medical device and life sciences industries. In her practice, she also assists businesses in securing and enforcing their intellectual property rights is the focus of my practice.
Experienced in patent prosecution, trademark prosecution, licensing and litigation, Laura’s background allows her to see both the beginning and potential end of intellectual property strategies. That perspective allows her to craft long-term solutions for clients. While obtaining a patent or securing trade secrets is important, looking forward to the implementation and potential enforcement of those rights is important.
Laura is admitted to practice before the United States Patent and Trademark Office with a technical background in chemistry, including organic and analytical chemistry.
Laura has published countless articles and written Harris Beach Legal Alerts on a wide range of patent and trademark topics in a number of technical fields, as well as numerous articles for American Intellectual Property Law Association’s Biotech Buzz newsletter.
Laura’s areas of focus include: Patent law; registered patent attorney with the United States Patent and Trademark Office. I also practice in the areas of patent and trademark litigation, business and commercial litigation and electronic discovery.
Recent Articles by Laura Smalley
One of the panels at last year’s IPWatchdog’s Life Sciences MastersTM Series addressed the thorny problem of patent eligibility. I moderated the panel, titled Patent Eligibility and the Life Sciences Industry–What Next?, where the speakers, with input from passionate audience members, discussed the impact of section 101 jurisprudence on innovation in the life sciences industry. Do the limits on what is patent-eligible subject matter created by the courts strike the proper balance or do unpredictable court decisions harm investment and research in the life sciences? While the majority view appeared to be that patent-eligibility reform is necessary, both to provide clarity and to incentivize certain type of inventions, the panel also expressed the idea that some form of section 101 jurisprudence is necessary to prevent “discoveries” from being monopolized, which could also harm innovation.
The Federal Circuit’s denial of en banc rehearing and the Supreme Court’s denial of certiorari review mean the decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), is the latest word on subject-matter eligibility under 35 U.S.C. § 101. In American Axle, the Federal Circuit applied the Supreme Court’s two-part Alice/Mayo test to hold a method for manufacturing driveline propeller shafts with liners designed to attenuate vibrations invalid as directed to a use of a natural law. The Federal Circuit characterized the claims as simply “[c]laiming a result” without “limiting the claim to particular methods of achieving the result. . . .” Id. at 1295. The method claims were directed to nonpatentable subject matter because, even though neither the claims nor the specification explicitly referenced a natural law, the method steps required the application of a natural law, “and nothing more.” Id. at 1297. Although the panel in American Axle stressed its decision was consistent with Supreme Court and Federal Circuit precedent, see 967 F.3d 1295, 1296 (“Our cases as well have consistently rejected such claims as unpatentable.”), its rationale, literally applied, jeopardizes broad categories of patent claims that have traditionally been considered patent-eligible subject matter.
