Knowles and Prosser Posit that the Expansion of s. 101 by the Supreme Court is Unconstitutional

Sherry Knowles (Knowles Intellectual Strategies, LLC) and Anthony Prosser, one of Knowles’ agents have written an engrossing article (18 J. Marshall Rev; Intell. Prop. L. 144 (2018) arguing that the Supreme Court has meandered so far from the statutory language of 35 USC s. 101 and its application in Le Roy v. Taitam (1832) that the Court’s reliance on its own questionable precedent, beginning with Funk Brothers, has led the Court to effectively delete the patent-eligibility of “discoveries” from s. 101. Because diagnostic methods are only rationally characterized as “discoveries”, I read their paper with interest. Ms. Knowles has been in the thick of the s. 101 debate since 2014, when the first PTO Guidelines on patent eligibility were issued. Dr. Prosser has a PhD in chemistry.

The once oft-quoted dictum from the Court in Le Roy – which reversed on novelty grounds – was: “A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable….” The authors argue that Funk Bros. would have been decided differently if the Court had followed Le Roy’s instructions, or even its own logic:

“He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” Funk Bros., 333 US at 129.

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USTPO Releases Proposed Revised Section 101 Eligibility Guidelines

On January 7th, the Patent Office released proposed revised s. 101 eligibility examination guidelines for public comment. The proposed Guidelines would supersede MPEP 2016.04(II), the section that controls the analysis conducted at step 2A of the Mayo/Alice test  “to the extent it equates claims ‘reciting’ a judicial exception with claims ‘directed to’ a judicial exception….”I describe these exceptions as “PAIN”: Phenomena of Nature, Abstract Ideas and Natural Products, and they have visited much confusion and dismay to the examination of claims that incorporate them. These proposed Guidelines focus on the “Abstract Idea” exception and barely mention how they should be applied to Phenomena of Nation or Natural Products. This may be because Director Iancu is more comfortable with software/computer system technology, or it may be because the Director, being a California-based litigator more strongly relates to the cries for reform arising from the software industry. Nonetheless, the Guidelines represent an important step at clarifying application of the Mayo/Alice test, and all practitioners should read them and adjust their claim drafting approaches to reflect these revisions.

The Guidance begins by summarizing the well-known subgroups of abstract ideas: Mathematical concepts, Certain methods of organizing human activity and Mental processes. The lengthy footnotes that summarize the case law in these subgroups do not cite a single life sciences decision, except for Mayo – quoting Benson – and the Fed. Cir. “Ambry” decision (774 Fed. Cir. 755).  In the latter case, the court invalidated Myriad’s method-for-screening claims as merely requiring comparing the sequence of the patient’s gene to the wild type gene and identifying any differences that arise. The Fed. Cir. noted that these were found to be abstract mental steps in its earlier Myriad decision. The isolation, hybridizing, amplifying and sequencing steps were dismissed as well-understood, routine and conventional. Thus, the subdivided claims failed Step 2B of the Mayo/Alice test. Continue reading

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Top Ten List of Patent News Stories in 2018

top 10 stampAlthough this list will reach most the readers of Patents4Life after 2019 begins, 2018 deserves some attention even if it has the feel of “those we lost in 2018” lists. Although most of my colleague-commentators have published their lists by now, I have not read any of them but rather, scanned my archives to look for patent news of note. If you want to re-read the original posts, you can look at the archives for the month my original post occurred. The comments below are notably citation-free, since I didn’t want to write a law review article to get my impressions down.

(1-3) Although this blog focuses on life sciences news, the three IP related Supreme Court decisions must be noted. In April, the Oil States Energy Services v. Greene’s Energy Group (appeal 16-712) the Court held that IPR is an appropriate exercise of power by Congress to assign adjudication of public rights, e.g., patent rights, to the PTO.

In SAS v. Iancu, also decided in April, the Court held that s. 318(a) requires that the PTAB must review all challenged patent claims. No more “partial institutions” of IPR (appeal 16-989).

In WesternGeco LLC v. Ion Geophysical Corp. (16-1011), the Court held that infringement under s. 271(f)(2) permits the recovery of foreign profits as damages for infringing acts carried out in the U.S. (June 22d). Continue reading

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Legal Wiggle Room in the Joint AIPLA-IPO Proposal on Patentability?

I recently took another look at the Joint AIPLA-IPO Proposal on Patent Eligibility that was prompted by the scheduling of a discussion meeting by the Minnesota Intellectual Property Law Association. I confess that I did not participate in either the AIPLA’s proposal process and cannot attend the upcoming MIPLA meeting but, nonetheless I have some thoughts.

The Joint Proposal to amend section 101 reads as follows:

“Eligible Subject Matter

(a)  Whoever invents or discovers, and claims as an invention, any useful process, machine, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

Sole Exceptions to Subject Matter Eligibility

(b)  A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole (i) exists in nature independently of and prior to any human activity or (ii) is performed solely in the human mind.

Sole Eligibility Standard

 (c) The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to:

1. The requirements or conditions of sections 102, 103, and 112 of this title;

2. the manner in which the claimed invention was made or discovered; or

3. whether the claimed invention includes an inventive concept.”

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