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« Momenta Pharmaceuticals Inc. v. Amphastar Pharmaceuticals, Inc.: "The Rest of the Story" | Main | USPTO Issues Several Final Rules for Implementing AIA Provisions »

August 14, 2012


An overlooked fact in this case is that the trees predate the statute! It seems to me that this would make them unpatentable under any interpretation.

While the thrust of the article is evidently not on the Product of Nature exception, clearly, that exception permeates the discussion and cannot be ignored or wished away.

Once you accept the fact that things are included in the judicial exception (ranging from minerals to molecules to plants), the discussion can turn to what matters from a legal standpoint: where is the line that divides a Product of Nature and a man-made item that no longer effectively covers the Product of Nature?

The lesson to be learned from Mayo v. Prometheus is the fact that even having some differences in place may not be enough. In that case dealing with the enumerated category of methods, MOT was met, but the claim as a whole was not considered enough.

A couple of questions that might be considered:

WHY did the Court NOT tell us what would BE enough?

I do not know.

Is there a brightline that can be drawn?

I do not think there is. I think there is just too much variability between Products of Nature and how applicants can attempt to claim their inventions. There is too much variability amongst the possible claims and the Product of Nature.


I agree that, unless you at least consider the legislative intent behind the statute, it's pretty arrogant to say that you're construing the language of the statute correctly per what Congress intended. But I believe Justice Scalia is of the view that legislative intent is irrelevant, and that you can only consider the bare words of the statute when construing it. His opinion in Eli Lilly v. Medtronic is a good example of that approach, even ignoring, as I understand, the comments from the floor managers of the Hatch-Waxman Act that the safe harbor was only intended to apply to patented drugs.

Nice catch on Judge's Dyk's inconsistent approach to the use of legislative history.

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