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« Biotech/Pharma Docket | Main | Bilski CLE »

July 01, 2010



A very interesting development, but also potentially very worrying/alarming. I originally thought that AMP v. USPTO might be the first of these cases where the Federal Circuit would grapple with the "fuzzy" ruling from SCOTUS in Bilski about what is patent-eligible under 35 USC 101. But I also recognized the tension between Prometheus and Classen. How the Federal Circuit will reconcile this tension in view of this "fuzzy" Bilski ruling from SCOTUS is anyone's guess.

Kevin - Well done. Thanks

One point I'd like to add, is that 5 justices seem to believe that little patentable subject matter falls outside the MOT test.

Regarding the MOT test, the Stevens concurrence states: “Few, if any, processes cannot effectively be evaluated using these criteria.” The Breyer concurrence continues, “the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.”

Granted, one of the five justices in this group is retiring, but his likely replacement signed the government's brief endorsing the MOT test.

In addition, no justices seemed to believe that patentable subject matter stretched as broadly as any method producing a “useful, concrete, and tangible result”.

Dear Mark:

I see the court's "affirmance" of the MOT test as a failsafe - if you can draft a claim for your invention that passes the test, your subject matter is patent-eligible. I also agree that the CAFC's "UCT" test from State Street is (or at least can be) overbroad. I am still thinking about a consistent rationale for making the distinction between Prometheus and Classen (and Metabolite), but it certainly appears that claims reciting technological steps that cannot be cast as mere "data comparisons" are more likely than not to pass muster.

Thanks for the comment.

Software patents should be abolished altogether. Canada is one country, among a growing number of them, that does not allow for patenting of software per se. Because most, if not all major software companies are American, the US government actively lobbying for proliferation of software patents. http://www.pinskylaw.ca

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