E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.

Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.

  • Law Blogs

Become a Fan

« Court Report | Main | King Pharmaceuticals Extends Tender Offer to Acquire Alpharma »

November 17, 2008

TrackBack

TrackBack URL for this entry:
http://www.typepad.com/services/trackback/6a00d83451ca1469e2010535f82396970b

Listed below are links to weblogs that reference The Relevance of In re Bilski to the Patentability of the Metabolite Claim:

Comments

Nice analysis, Kevin. Thanks.

Dear Kevin,

Regarding diagnostics: since intent is usually given no patentable weight, unless the assay methods used are novel and non-obvious, I don't see how claiming a kit or a device for diagnosing a condition/risk on the basis of a newly found correlation is going to confer patentability to the invention.

Could someone please develop the idea behind multiple uses for a mental step (i.e. correlation) being an argument against a claim to one of those uses preempting the activity?

Thanks,
David

Dear David:

Whether a claim is patentable under 102, 103 and 112 isn't my concern; I think kits and devices are more "tangible" embodiments of the correlation and thus are less at risk under the court's Bilski analysis. Don't you think that the machine part of the Bilski test would render patentable a device that "read" a drop of blood to detect increased homocysteine = need for vitamin supplements?

I think Diehr says that an algorithm useful in a claimed method can be patentable provided that the entirety of the algorithm isn't pre-empted - that was the distinction the court made in Dayton.

Sorry - Besson

Kevin

To quibble just a bit, I think it was Benson where the court said an algorithm is patentable provided it doesn't preempt all applications; Flook said an invention is patentable provided the algorithm isn't the point of novelty; Diehr did cite the preemption argument from Benson (it also cited Flook), but I think Diehr is based primarily on the rule that an abstract algorithm is not patentable, but it is patentable if it has a practical application. That is certainly how the CAFC interpreted Diehr at least until Bilski (see e.g. Alappat). I think these three approaches to subject matter are different and incompatible. I entirely agree that the CAFC has finally decided to try to follow SCOTUS precedent. The hash in Bilski is the result of trying to follow incoherent precedent.

Dear Siebrasse:

That's what I get for referencing Judge Newman. I guess the point is that Benson says the invention DID preempt all applications and was unpatentable, and the invention in Diehr did not preempt the algorithm and so was patentable. I do agree that the CAFC will go astray if it blindly follows incoherent Supreme Court precendent - it seems Supreme Court justices have their own brand of gobbledygook.

Thanks for the comment.

Sorry, Norman - I am traveling and am pretty tired. I meant to say either "Dear Norman" or "Dear Mr. Siebrasse." No disrespect intended - thanks for the contribution.

If you would like another perspective on the issue, see:
W.M. Schuster's "Predictability and Patentable Processes: The Federal Circuit's In re Bilski Decision and Its Effect on the Incentive to Invent." 11 Columbia Science & Technology Law Review 1. Available at:
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1353604

The comments to this entry are closed.

April 2014

Sun Mon Tue Wed Thu Fri Sat
    1 2 3 4 5
6 7 8 9 10 11 12
13 14 15 16 17 18 19
20 21 22 23 24 25 26
27 28 29 30