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January 05, 2014

Comments

Regarding Justice Kagan’s ‘limitation,’ I am struggling to envision what form of distinguishing fact pattern (for any other self-replicating product) might exist that would lead to a different conclusion based on the law as rendered in the Bowman case.

It seems pretty clear that a reasonably foreseeable use of a patented item (in fact, the number one use for seeds is planting; let alone when one considers that the particular Monsanto invention for these seeds necessarily entailed planting – use of the seed as food directly by humans or animals has no nexus whatsoever with the invention). What possible ‘use’ set of facts can be dreamed up that would yield a different result?

In your Myriad write-up I see two items I would seek to clarify or challenge:

One: “or, worse, on ‘products of nature’ no matter how altered”

Clearly the driver of the case was the notion of change in kind versus change in degree. This was pivotal in understanding what the term Product of Nature includes. Thus, there was NEVER a concern that the Court would render a decision based on a thought of “no matter how altered.”

Two: “While the case did not establish a categorical “product of nature” preclusion….”

Sorry, but that is exactly what the case did establish. If you constrain the understanding of what is a product of nature (as in not enough change to effect a change in kind), the result of the case very much should be interpreted as mandating that other products of nature (correctly defined) are indeed categorically unpatentable (as in not patent eligible). That is precisely the law TO take away from the case.

Skeptical,

I agree with you that the holding/ruling in Myriad is based squarely (explicitly or at least implicitly) on the "product of nature" doctrine. And we at least know from that case that at least some of the claimed cDNA was considered a "difference in kind rather than degree." But we're still left with no general definition from Myriad as what is a difference in "kind" versus "degree."

EG,

Sounds like you want more brightline than what one would ever expect from the Supreme Court.

"Sounds like you want more brightline than what one would ever expect from the Supreme Court."

Skeptical,

You're correct, but is why we've currently got "chaos" in patent-eligibility determinations under 35 USC 101. (Do I also detect a note of sarcasm in your comment directed at SCOTUS?)

The impact of Myriad is huge. The PTO currently interprets Myriad to cover primers, primer compositions and kits with primers, even if the compositions or kits include non-natural components. And don't try to add "synthetic" because that will get rejected too. Try explaining that to your client

The explanation to the client is rather straightforward, IP.

Just because you can duplicate something does not mean that you can have exclusive rights to that thing.

Do you understand the warehouse of nature analogy? I am...

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