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« Court Report | Main | Court Report -- Part II »

August 05, 2014



The ACLU hath no shame. The only thing that will be "impeded" if Section 101 screens out too much subject matter is innovation. Has the ACLU contemplated what would happen to the next Taxol under their restrictive view?

If the ACLU determines policy, we will all be spending more time on section 101 than 102/103.

That is because the proposed functional criteria are too subjective.

For Example, the fruit in American Fruit Growers had a different structure -- borax in the rind -- but not a different function; it was still intended for human consumption.

That is the way the Supreme Court saw the issue. Another way to view it is that the Grapefruit rind without Borax functioned to promote growth of blue mold; while the rind with borax functions to retard growth of blue mold.

As another example, the Supreme court informed us that the Chakrabarty bacterium had both a markedly different structure and function than any found in nature. However, at the level of the plasmids involved, each plasmid had the same structure and function as when found in nature. The only difference was putting several plasmids together in a single bacteria.

It is worrisome that Examiners, operating under extreme time pressure, will find it all too convenient to focus on section 101 rejections which require no research.

If we adopt the 'distinctive name, character, and use,' standard some real inventions might never get through the section 101 gate.

Consider the example of the first derailleur gear shift for bicycles:
The apparatus as a whole has no distinctive name, it remains a bicycle. It's use remains unchanged, it is a device for locomotion. As for character, an Examiner pressed for time could easily say that the derailleur still employs a chain which engages teeth on a gear, so that is not significantly different in character than previous single speed bicycles.

Nonetheless, few among us would dispute the contention that the first derailleur gear system was a breakthrough in cycling technology and well within the scope of patentable subject matter.

As troublesome as the recent spate of Supreme Court 101 decisions has been, it seems that the societal interest is best served by leaving section 101 invalidation in the hands of the court.

Dear Dr. Yarus:

But the problem with leaving it to the courts is that we substitute one person's subjective judgment (the Examiner's, with review by the Board) with another's (a district court judge). Properly informed, my money is with the Office; at least they understand the technology and the advance in the art that any particular invention may represent.

Great example about the bicycle, by the way.

Thanks for the comment

The debate between the good doctors is interesting in that the law is being placed in each of two wrong branches of the government (with the simple and best solution being the branch undiscussed and unchampioned: the Legislative branch).

How about we simply get our Congress to weigh in on this ever shifting, ever subjective, may I dare even call it a nose of wax, issue?

That we as a nation see the value of such directness, well, sadly, I remain...

ACLU argues that there must be marked differences in structure AND function? So - even a molecule that was markedly changed by man would still be rejected if it retains the natural function? They're obviously trying to destroy cDNA claims through the back door. The Supreme Court made clear that cDNA has no markedly different function compared to the genomic sequence, yet one is patentable and the other is not. But under ACLU's inspired reading both should now be rejected in the PTO.
What I find curious is that they don't even acknowledge all the rejections for things other than DNA that are now going on. Medicinal molecules, pharmaceutical compositions, vaccine preparations and even laundry detergent enzymes are now being rejected on the grounds of their theory. What are they trying to accomplish? I don't get it.


As we discussed elsewhere, it doesn't matter what Congress does. Suppose Congress amended Section 101 to say "This section specifically authorizes patent claims for products of nature isolated or substantially isolated from their natural setting and having a use within the meaning of the terms of this statute," what does SCOTUS do? Overturn the law as being beyond the scope of Congressional power, insofar as SCOTUS believes such claims do not "promote the progress . . . of the useful arts."

Only way to overcome this situation would be to amend the Constitution to take away from the judicial branch matters about which they are clueless. What do you think the likelihood of that might be (let's just say I'm skeptical).


Although, personally, I would like to see more than mere conjecture about this future diminution of progress based on some broad patent.

One would like to think that if a broad patent is patentable (under the other aspects of law), that it would be sufficiently different so as to have ushered in what it was worth - if we truly meet the novelty/nonobviousness requirements, than what came before ANY invention would be enough protection from something NEWLY broad and wonderful.

Agree with Moscow. The ACLU misses that cDNA, which, at least to SCOTUS, had no different function from genomic DNA (i.e., it carried the same information), was nevertheless patent eligible because of the difference in structure. For cDNA the structural difference overcame lack of functional difference. It should be a balanced test - kind of a sliding scale a la J. Moore in Myriad I and II.

Also, the Hartranft test (which is not a bad test) actually should be a "distinctive name, character OR use." The original quote in the tariff cases used the disjunctive "or" rather than the conjuntive "and". It was Chakrabarty that swapped an "and" for the original "or" - and Myriad quotes Chakrabarty (thus bringing the "and" into Myriad). But, quite frankly, the use of "and" by Chakrabarty was simply to fit the facts of Chakrabarty (the bacterium did have a distinctive name, character, and use).

The correct original Hartranft test - "distinctive name, character, or use" - is much less onerus. For example, one need only argue that the first derailleur gear shift changed the character of the bike.

But, realistically, we are applying a test to determine eligibility of natural products - not a novelty/obvious test. The bike example given by Dr. Yaris is a bit of a red herring because it compares a new bike to an old bike - not a new bike to a product of nature. If we do a comparison of the new bike to a product of nature (e.g., a cheetah!) the bike is clearly different in name, character or use (and here, like in Chakrabarty, we can use "and").

Moocow--it appears the ACLU thinks that if there are no patents, medicine will be free. I myself wonder how long it will take US-based pharmaceutical companies to move at least part of their operations to Europe where the patentability standard has not been changed. I also wonder whether the ACLU will continue its attack on patents by trying to invalidate the patent on Ebola 'serum,' which as a collection of antibodies might be analogized to a Funk-like collection of natural products (entirely incorrectly, in my opinion). If that happens, Karnak predicts that in the future, the company making the experimental hail-Mary drug will be European, as will the first patients receiving it.

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