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August 03, 2014


Hey Kevin,

How about also creating a "pod of whales."

A very real problem remains Dr. Noonan:

No matter what you advise NOW, the courts can move the goalposts LATER, blaming the "scriviners" for doing the exact job that you are now asking for. In other words, your "answer" is NO answer, because down the road the courts can simply decree it to be NO answer.

We really need to NOT play this game. We really do need to take a stand - do claims pass 101 as the statute is written or do they not?

How deep the rabbit hole of "implicit" will we allow the courts to dig? Which branch of the government gets to write patent law? After all, if the courts can "interpret" the law to bend the nose of wax into anything it may choose to want (that is, play the "policy" role that belongs to Congress if the general view is that "patents are too many" or "patents are too easy" or "patents are too broad" then why bother writing patent law in the first place?

I know you mean well - and somehow - in the short term - we as advocates for our clients need to keep pressing for protection for our clients, but when is enough, enough? Where do we draw the line?

Is this the peace for our time that we really want? Is this the peace for our time that we should - as advocates - accept?

Is this the peace for our time that will really provide the protection our clients deserve?

As to the last question and the advice you offer, well (unfortunately), I remain...

Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980) (Products of na- ture are not created, and “ ‘manifestations . . . of nature [are] free to all men and reserved exclusively to none’ ”)

Never mind the S.Ct?

Dear Jim:

Depends on how you define a "product of nature" - and don't forget, the Chakrabarty opinion also says that a patent-eligible invention, even if alive, must show evidence of "the hand of man." Which a genetically identical flock would do (it doesn't occur in nature).

But of course you are right - the Supreme Court could disagree. But keep in mind that my herd claim is not that broad (depending on how you define "flock" or "herd" - the serially cloned prize bull avoids such a claim, for example.

Thanks for the comment.

Twins - all your "flock" does is change the number and that simply won't be a change in kind that the Supremes will support.

Dear Skeptical:

Re: twins: maybe, maybe not - which is why it depends on definition and asserted utility.

The base problem is that the Court is asserting its authority to check Congress and the Executive from exercising the patent power outside its Constitutional bounds. For the Court, obsessed with the idea that patents can inhibit as well as provide incentives for innovation, permitting certain subject matter to be patented (even if Congress had enacted "everything under the sun made by man" into the statute) exceeds Congress's powers (putatively because patenting these things does not promote progress). So there is no easy fix, other than the other branches pushing back in how they interpret the Court's pronouncements (the problem with the current guidance is that it extends the Court's holdings far beyond what is necessary).

Until we can come up with a way to convince five Justices generally uninformed about patents, the patent system and patent law (who rely on precedent from their equally misinformed predecessors) that permitting patenting broadly promotes innovation (against a chorus of the IT community, physicians and their patients who would rather steal others' technology) we won't solve the present problem.

Which is why I suggest ways to avoid the most pernicious of the consequences of these decisions.

Dr. Noonan,

Don't get me wrong - I understand why you are suggesting what you are suggesting.

The problem, though, is as I point out: you are fighting a rear guard losing battle. The ways you suggest have ALREADY been decried by the Court as the handiwork of scriviners - and the Court has no compunction of LATER moving the goalposts and obliterating what you advocate for the NOW. Your advice is tantamount to wasting the client's money. I know that statement "hurts." I do not enjoy making that statement.

Re: asserted utility has already been nullified as patent justification by the Court. That's a stillborn argument. In fact (as I am sure that you grasp), having TOO MUCH asserted utility is what the Justices fear. And "artificial limits" - like fields of technology - are simply ignored in how the Justices go about seeing what it is they want to see. Lots of nowhere plans for nobody.

We all must remember that the guidelines do NOT mention "product of nature" but instead state a "natural product" is not patent eligible. This is very different and broader.

I do not see the difference that you see, In the trenches. Can you explicate?

Dear Skep:

The alternative is to simply give up. I think that Justice Breyer was right, but 1) he doesn't do this every day, we do and 2) the Court will have a tough time justifying invalidity merely because some inked-stained wretch of a patent lawyer has drafted a claim consistent with the convoluted twists and turns of the law created by all this goal-post moving. But like I've said about the ACLU, if the Court wants to start invalidating patents one at a time (and has nothing better to do), who am I to stop them?

Dear Skeptical

Maybe you work for the PTO since they also do not see the difference, or more correctly acknowledge the difference. As a biologist the difference is easy to see. A “product of nature” is so just that, a product found in nature. However, a “natural product” is something composed of products that are “natural” not synthesized. Most things in the world are natural products, since they are composed of components from nature. For example, a specific DNA sequence that codes for insulin is a “product of nature”. However, if you break the nucleotides apart, you no longer have a product of nature but it is still a natural product. The mixture of nucleotides would be rejected under 101 as being a “natural product” and not patent eligible. You might say that the mixture of nucleotides would be patent eligible, but you would be wrong, since I have received a 101 rejection on a similar claim. Another example of “product of nature” versus “natural product” is carbon and iron versus steel. Carbon and iron are products of nature, but steel is a natural product (mixture of carbon and iron) and not a product of nature. Examiners are rejecting claims to natural products that are not products of nature.

Thanks for the distinction.

I would call your "natural product" something else if it is something that is not found as a total item in nature.

EVERYTHING is composed of products that are "natural" - there is NOTHING that we have - absolutely nothing - that exists outside of components of nature. I suggest instead you call your man-made products "Man-made products" as opposed to "natural products."

Perhaps you have seen the allusion to the natural components of electrons, neutrons and protons, that is often mentioned on other blogs? That logical construct fits your emphasis of distinction. Your emphasis thus draws to an illogical conclusion in the patent context, and interestingly, is the same illogical conclusion that is reached by the software is "maths" crowd when one considers that everything is "maths."

The ontological/philosophical error is quite analogous.

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