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« AMP v. USPTO -- Briefing Update | Main | AIPLA Submits Amicus Brief in AMP v. USPTO »

November 02, 2010


Will Standing trump Eligibility, or will the court take up the Supreme Court's invitation in Bilski and use this opportunity to better define that subject?

Good job Dr. Noonan, you've laid out the law nicely.

I believe that the current patenting of DNA does not use the correct criteria in distinguishing between works of nature and manipulated DNA, and that the amicus brief errs in still allowing cDNA (which is just a transcription of naturally occuring RNA sequences) to be patentable.

More on my blog at http://gasstationwithoutpumps.wordpress.com/2010/10/31/patentability-of-dna/

In other news, people loled at the IPO's brief.

Also, Kev, why get so worked up? If you guys need protection for your little molecules, why not just go ask congress for a molecule patent statute? I'm sure they'll be happy to oblige.

Dear Gas:

You are certainly entitled to your opinion. I agree that the distinctions raised by the DOJ are inapt, but of course I come to the conclusion that isolate DNA is also patent-eligible.

Thanks for the comment.

Dear 6:

Always happy to amuse you and your peeps.

Not to worry about me, though - I'm not worked up at all. By the way, Congress has already passed a law that protects my "little molecules" - it's called Section 101.

Always nice conversing with you. Did you decide on that California job yet?

so, Kevin, if gaseous, isolated O2 is also patent-eligible, as you seem to have remarked here or elsewhere, is there anything that fails under the Diehr and Chakrabarty standards? What do you think an abstract idea, law of nature, or physical phenomenon is, exactly? Can you give an example? Why isn't the isolation of genes accomplished via transcription in nature?

Dear David:

Now, let's get things in context. My point is that purified oxygen, as produced by Priestley, should have satisfied the requirements for a composition of matter in the 18th Century. This is based on the then-prevaling belief that combustion was dependent on the quantity of phlogiston in combustable substances. I am not arguing that oxygen is patentable today (and of course the argument is hypothetical because Priestley isolated oxygen before there was a Patent Act, or a USA, for that matter).

Plenty of things fall within the proscription of Diehr and Chakrabarty (keeping in mind that methods and tangible articles have different standards). Per Judge Dyk, a leaf isn't patentable, nor is a stone, or water, or most things in the natural world as they exist in the natural world. (That past phrase should be in italics.) The reason is simple - they do not show the "hand of man" and have not been changed in any way from their natural state. Bear in mind that none of these things is either a law of nature, a natural phenomenon or an abstract idea; I use Judge Rich's calculus on patent eligibility rather than the absence of teachings from the Supreme Court on this point.

Finally, genes are not isolated via transcription. In addition, what nature produces is a single-stranded RNA molecule that is unstable, unisolated and useless for making proteins outside the cell. I think those biological, chemical and physical differences are enough to distinguish mRNA from isolated cDNA (and I don't think mRNA infringes claims to cDNA, so if you want to practice the invention by isolating lots of mRNA and trying to get a cell to express it, be my guest).

Thanks for the comment. I assume no baby yet, or you would have more pressing things to do than chat with me. Good luck.

Thanks, Kevin, I see clearly now where we differ. I see the leaf, stone, and other things in the natural world as directly analogous to the gene, as each could be isolated through human intention from their "natural state." I also abide by Diehr and Chakrabarty's guidance and see each of these as natural phenomena. My point about genes is that the process of transcription indicates that the isolation of the gene occurs via the placement of the promoter and stop codons... the information itself isolates the gene from the rest of the genome. Transcription relies upon this natural isolation.

So tell me what you think constitutes a real natural law, physical phenomena, or abstract idea. I am really curious, or do you think these are useless categories that we should ignore?

We are waiting on tenterhooks, and following this debate is a good distraction.



I do not understand what you mean by your statement of "as each could be isolated through human intention from their 'natural state.'" I think that you are redefining "isolating" to mean a mere separation without more. "Isolating" in the instant claim context is decidedly different. You then seem to hold a completely different meaning of "isolating" with the codons that has nothing at all to do with the separation from the rest of the molecular chain.

That's a lot of effort to piece together definitions and examples to fit your position while ignoring what is actually happening here.


I don't see how placement of promoters, etc. Constitues isolation. Demarcation, maybe.

Natural law is gravity. Patentable use would be machines that use gravitational force to translate into something else - hydroelectric dams come to mind.

Natural phenomenon is wind. Patentable use would be a windmill - I'm sure you know what those are. :)

Abstract idea is the gene theory of disease. Isolated DNA a patentable use (sorry, I couldn't resist).

Glad to provide a diversion. Can't wait for the Facebook pictures.

Best, Kevin

Kevin, it seems to me that you distinguish between natural and unnatural demarcations, and are willing to grant inventiveness to unnatural demarcations even if they end up being identical to natural ones. So the examples I have frequently used are natural vs. Fiat borders around landmarks (my recurring example is the Devil's Tower), or perhaps the junction between a leaf and a branch. In the one instance, a leaf fals from a tree, no human intention, thus no patent-eligible artifact. In another instance, a human snaps the leaf from off the tree, so I assume that to you is human involvement sufficient for inventiveness. In the one instance, photosynthesis isolates an O2 molecule from CO2, thus, not patent-eligible, in another instance, a human devises a way to isolate the very same molecule from mercuric oxide, or maybe by electrolysis from water, and so now suddenly the same molecule is patent-eligible. The boundaries in each of these cases ore-exist human intention. The underlying objects in each case are identical, but for you, as soon as the slightest bit of human intention is involved, an otherwise natural object, defined by natural boundaries, becomes patent eligible. This seems to conflates a process and a product, and unnecessarily populated the world with objects. Suddenly, there are, for instance, mercuric-oxide-liberated O2 molecules vs. Water-liberated- O2 molecules. This sort of lack of ontological sparsity is maddeningly strange to me.

Oh, and I got a sweet new camera, so the Facebook pics of the child will be awesome, let us hope.

By the way, one other puzzling thing... When does an idea become abstract. The gene theory of disease is certainly abstract. The idea of Canavans disease is also abstract (as it is a tup, not a token). A particular instance of Canavans disease is not abstract. My point is, the term abstract applies, technically, to all ideas since all types are necessarily abstract and all instances necessarily concrete. If we agree that all abstract ideas are not patent-eligible, then we should agree that the type represented by the token in the claims that patent Canavans disease are not patent-eligible.

Just a thought.


We've had this debate before. The problem you're having is apply "philosophical theory" to practical reality.

The "isolated" DNA sequences claimed by Myriad aren't made by "mother nature" and cannot be made by "mother nature." Tell me how "mother nature" does, for example, PCR required to get these "isolated" DNA sequences? As Kevin points out "genes are not isolated via transcription" which is "mother nature's" process. Put differently, we aren't simply picking up rocks or plucking leaves when we "isolate" these DNA sequences.

More significantly, these "isolated" DNA sequences don't operate like when these sequences are present in the native DNA. In fact, the properties of these "isolated" DNA sequences are very different from the native DNA. Read the Myriad, AIPLA and BIO briefs, and you'll find out why this "isolated" DNA has very different properties.

I also agree with Kevin that "isolated" oxygen is different from oxygen in air, and we're lucky that it is (I also happen to be an undergraduate chemist). Can you imagine how flammable our world would be if we didn't have that ~80% nitrogen in the air!

BTW, best wishes on the new addition to come. As a parent of two boys, it's an exciting time.

Hi Eric, yes I know we have debated it before, and I was once a lone voice in the wilderness, and now courts and the DoJ are making my arguments. Perhaps we are all stupid, deceived, etc., or perhaps we have a point. My point is that the sequences that are identified, of not modified, belong to the class of objects excluded by Diehr and Chakrabarty, as would O2. Usefullness is not enough, there are parts of the universe, what I have called commons-by-necessity, that cannot ethically be monopolized. I argue that the sequences that Myriad and numerous others identified belong to that class of objects. Under your view, even laws of nature and physical phenomena, like O2, even though molecularly identical to O2 produced by photosynthesis, becomes a new thing if produced by man. This overpopulated the world illogically, and unnecessarily. Give Myriad the method claims, if new and non-obvious, but not for a new product since the product is a physical phenomenon pre-existing human intention.

And thanks for the mazel tovs, we are still waiting now a week past the due date and eager and anxious.


Thanks for the reply. I didn't figure we would agree on this.

You view this issue from a philosophical and ethical standpoint, while I view this issue strictly from a legal and especially IP law standpoint. From an IP law standpoint, "isolated" DNA, as well as oxygen extracted from air, are not "natural phenomena"; only human intervention can create these entities, which under Chakrabarty, means these are patent-eligible (but not necessarily patentable).

I understand your point of view and you certainly understand mine. That means we're simply going to have to "agree to disagree." Also, I would be very surprised if the Federal Circuit agrees with Sweet or you (with the exception of Judge Dyk).


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