I admit, I am a sucker for lists, esp. Top Ten Lists, and a few days ago, sat through a half hour of “local news” wherein the anchors breathlessly related the Top Ten Rhode Island News Stories of 2012. Well, readers, you deserve no less that my Top Ten List of IP “Stories” that broke, sometimes over us, in 2012. So that this post is not endless, I will write it from very abbreviated notes and leave it to you to dig the details out of the patents4life archives – or to just back up through the posts of 2012. Also, past Prometheus and Myriad, the list does not mean to prioritize the events reported.
Posts Tagged ‘Prometheus v. Mayo’
A mathematical equation, even directed toward solving a particular problem, cannot be patented. Prometheus (“Mayo”) 132 S. Ct. at 1299. However, in Diehr, the S. Ct. stated, hopefully, that “[a]n application of a law of nature or a mathematical algorithm to a known structure or process may well be deserving of patent protection.” Diehr, 450 U.S. at 1987. Post-Mayo, we have seen precious few examples. In a recent Bd App decision, Ex parte Potts, App. No. 2011-004700 (July 18, 2012), the Board entered a new ground of rejection, patent-ineligibility under 101, to send the application back to the Examiner. The main claims did sound broad, and involved preparing a self-organizing map (SOM) – by topographical data mining (?) from outcomes of previously treated patients, generating a similar SOM for the patient – insofar as possible – and comparing them to predict whether or not the patient would respond to a given treatment.
ght=”150″ />On July 3rd, the PTO released 13 pages entitled “2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature.” They are intended as guidance for Examiners who encounter such claims, e.g., in Group 1600, in the setting of a method of medical treatment or a diagnostic method.
The guidelines are an attempt to conform the examination process to the S. Ct.’s decision in Mayo v. Prometheus and set forth a three-part inquiry to determine patent eligibility: 1) Is the claimed invention directed to a process? 2) Is a natural principle – e.g., a naturally occurring relation or correlation a limiting feature of the claim, and 3) Does the claim include additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, and are sufficient to ensure that the claim amounts to significantly more than the natural principle itself? “(Is it more than a law of nature + the general instruction to simply “apply it”)? If the answer to the 3 queries is “yes”, “yes”, “no”, the claim is patent ineligible. Number 1 is pretty easy, number 2 is trickier than it appears and number 3 is pretty much stuck in the Twilight Zone.
A guest post from shareholder Robin Chadwick of SLW.
A quick survey of folks who read this blog indicates that funding for 5
0% of respondents’ R&D is affected by whether or not a project was patentable. Similarly, 50% of respondents report that aspects of R&D are modified by whether their R&D is patentable.
Most of those who responded were involved in the business of diagnostic methods (95%), recombinant technology (81%) and/or nucleic acids or proteins (90%).
Sixty-four (64%) of respondents stated that diagnostic method claims should be eligible for patenting when drawn to an in vivo relationship between an administered drug and its metabolite concentration.