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December 19, 2013

Comments

Kevin,

Well done, good and faithful servant (and balanced too)!

Sorry but I must disagree, EG.

The piece is neither well done, nor balanced.

Basically, it is a let's redo the Myriad case without actually addressing the deciding rationale of that case.

It OVER-identifies a (quite possibly false) concern about impeding research and implicitly conflates that with impeding commercial activity on an item that squarely falls in the proverbial "Warehouse of Man, open to all."

A rather bland "That can't be right" quite misses the entire reasoning of the 101 exception. And while I share a disdain of the role of any Court in implicitly writing patent law at a 101 front gate level, the idea that the Supreme Court is somehow breaking new ground with a Product of Nature exception is neither accurate (think Funk) nor especially different from any other 101 exception the Court has made. If Dr.. Noonan wants to remove one, then he must be ready to remove them all. The piece here fails for being too specific to one case, and too specific to that one case for one reason (cost).

For me, while lessoning the impact of cost may be a valid reason for the patent system, it is by no means such a predominant one. Here, the writings smack too heavily of a but-for reasoning which I believe cannot stand.

I would further note that Machlup was such an ardent antipatentist that while his rampant bias should be obvious from reading his manifesto, those that most need to recognize this bias are likely to be the same that merely view his writing as confirmation of what is 'right,' and thus will undoubtedly repeat the errors of the past without learning from them.

Without this recognition, the pendulum will swing back and forth.

Attracted by the title, I read the piece hoping for good insights into how patents promote the progress of useful arts. Mindful of the outcry against software patents, and thinking like the author that one size patent right does not fit well with both CII and chem/bio, I read further.

But by the end I felt cheated. As another commenter observes above, the piece addresses just one case. For me, patents always did fit well with chem/bio. Nobody ever says that chem/bio is not the useful arts. As far as I am aware, the uproar about whether patents are a Good Thing is about whether people should be allowed to patent what are, in effect, concepts of doing business.

MaxDrei's post begs the question:

Is business, or rather, A particular APPLIED method of doing business something that is in the "Warehouse of Man, open to all."

Clearly the abstract notion of 'business' stripped of limitations is not patent eligible. But that is true of anything, and is more of a sign of obfuscation than application of law. See Rader's admonitions on this way of treating claims. See the warnings from the Supreme Court about this way of treating claims.

If one squints their eyes in an effort NOT to see claim limitations, then absolutely nothing is patent eligible. All claims can be broken down into a 'gist' and a particularized field in which that 'gist' operates.

By the way the phrase "Concepts of doing" is itself obfuscating. "Concepts of doing" is nothing more than a turn of phrase and means the same as "method" which is an expressly allowed category of patent eligible matter.

Dear Max:

I would say I am sorry you felt cheated except that you seem to have missed the subject matter of our blog. While we do foray occasionally into other sides of our practice, we can only expect our readers to recognize that biotech and pharma are our focus, and not to expect us to discuss patenting "concepts of doing business."

And as unlikely as it may appear from a European perspective, the patent eligibility of large sections of "chem/bio" is in question in the US. How far this swing of the pendulum will go is uncertain; part of the motivation for the piece was to suggest that going any further in the direction taken by our Supreme Court has consequences not consistent with the best interest of the future.

Dear Mr Noonan, thanks for those remarks. Looking in from Europe, it seems to me that patent lawyers are doing nothing more than their job when they push the limits of eligibility/utility. Unless creep is seen as good, and to be permitted, the authorities have to push back,simply to set meaningful boundaries. Eligibility/utility pendulum swings are (for me at least) something to be deplored, especially when we see them in what has always been the vital heartland of patenting, namely chem/bio. I prefer delicate touches on the tiller, to maintain the overall direction constant, and reliably deliver a scope of protection that is proportionate to the enabled contribution to the progress of useful arts.

Dear Max:

Hear, hear! Unfortunately, our Congress and Supreme Court don't appear to be listening.

All the best in 2014

"but also results in significant benefits to universities and the return on public investment. "

Well, it would in theory at least. I heard that the return to uni's collectively from patent procurement and licensing was way in the negative but they just keep on keeping on.

" If Dr.. Noonan wants to remove one, then he must be ready to remove them all. "

I rather agree if that is what he wants to do.

The comments to this entry are closed.

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