Prometheus Q/A – Which Side Are You On?

A guest post from Robin Chadwick of SLW.

During the three weeks since the Supreme Court ruled that certain diagnostic claims are not eligible for patenting, four other patent cases have been impacted by this ruling.

The Court is shaping public policy by its ruling.  Do you approve of such a public policy?

Tell us what you think of the recent Supreme Court Prometheus decision!  Take a short survey by clicking on the link below.  We will publish the results of the survey so your voice can be heard!

Prometheus Survey

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One Response to Prometheus Q/A – Which Side Are You On?

  1. Paul Cole says:

    Arguably a key error in the Mayo decision is underestimation of the significance of the wherein clauses. Information as to the interpretation of the test gives life and meaning to the test and is therefore arguably a technical feature associated with the test.

    Interestingly test interpretation is also to be found in the mechanical arts.

    US 6163960 has a main claim reading:

    A method of testing steering wheel lash for acceptability in a vehicle having a steering wheel, the method comprising:
    securing a steering angle fixture to the steering wheel, said steering angle fixture having an indicator for indicating whether the steering wheel has been moved a predetermined angle;
    moving the steering wheel to a first rotational position, recording the steer ahead angle at the first rotational position, said steer ahead angle at the first rotational position being a first steer ahead angle, and setting the steering angle fixture at a predetermined fixture position;
    moving the steering wheel to a second rotational position at which the indicator indicates that the steering wheel has been moved the predetermined angle, and recording the steer ahead angle at the second rotational position, said steer ahead angle at the second rotational position being a second steer ahead angle;
    indicating that the vehicle has excessive steering wheel lash if the difference between the first and second steer ahead angles is less than a predetermined amount.

    US 6331708 has a main claim reading

    A method of testing whether a diamond has had a layer of synthetic diamond deposited thereon, comprising:
    directing a beam of ultraviolet radiation towards a face of the diamond, so as to form a pattern of beams of radiation due to refraction and reflection of the irradiating radiation, and
    observing the pattern of beams of radiation substantially of wavelength substantially in the range of 230 nm to 320 nm
    whereby if the reflected and refracted beams are weak or unobservable, it is indicated that said face is formed of natural diamond, and if said pattern is complex, it is indicated that said face is at least partly formed of synthetic diamond.

    It seems that including information about interpretation is standard practice in patents relating to methods of testing, and thaty the inclusion of such information in a claim should not be grounds for holding that the claim by the presence of that information is rendered patent-ineligible.

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