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.

Become a Fan

« Supreme Court Preview -- Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. -- The End of Cybor Corp.? | Main | PTAB Update -- A Review of the First Round of Comments -- Part 2 »

September 30, 2014

Comments

"Noting that there are different ways to interpret relevant Supreme Court decisions on subject matter eligibility, she noted that the revised Guidance would not be confined to DNA because the Court's Myriad decision 'does not stand alone.'"

Honestly, post-Roslin this is not even an open question. The PTO has to follow the holdings of precedential CAFC rulings, and Roslin held that Myriad compelled a holding of ineligibility for a cloned organism. Not to put too fine a point on it, but an organism is not an isolated DNA molecule. In other words, the view that Myriad is only applicable to DNA has been untenable for at least a few months now.

I do not think, however, that either Myriad or Roslin compel the conclusion that all isolated biomolecule claims are per se ineligible. I see nothing in either Myriad or Roslin to convince me that, for example, Bergy has been over-ruled. That is to say, the Bergy rule--i.e., an isolated/purified organism (or, by extension, biomolecule) is 101 eligible if the isolation/purification imparts a new functionality that the unisolated/impure composition did not have--should still be applied when assessing subject matter eligibility. The problem with Roslin's clone is that its functionalities (breeding, meat, wool production) are all the same as the prior art livestock.

On the interpretation of Myriad see my comments on this blog: Myriad -- An Obvious and Patent-Friendly Interpretation

http://www.patentdocs.org/2014/06/guest-post-myriad-an-obvious-and-patent-friendly-interpretation.html


On Roslin see the submissions that Tim Roberts and I made to the USPTO concerning TRIPS compliance,

http://www.uspto.gov/patents/law/comments/mm-f-coleroberts20140729.pdf

see also my comments on Funk Brothers.

It may not be the best way forward to point out that Federal judges are wrong, even where they are. Better to find a narrow interpretation that leaves their dignity intact whilst removing the sting from the observation in question, especially where it is not essential to the rule of law applied by the court and is a mere dictum. Arguably the remarks in Roslin apply only to unchanged microorganisms in their natural environment, otherwise there is conflict with the opinion in Chakrabarty which to the best of my knowledge is still good law and was followed rather than distinguished in Myriad.

The comments to this entry are closed.

September 2016

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