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« IPO Webinar on Commercial Success at the PTAB | Main | Conference & CLE Calendar »

March 21, 2015

Comments

Those attending the meeting should take the opportunity to outline the continuing problems with the natural product examples accompanying the Guidance.

Comments on the new Guidance are to be found at a dedicated webpage

http://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-2014-interim-guidance-patent-subject-matter.html

The comments that I filed are to be found here

http://www.uspto.gov/sites/default/files/documents/2014ig_f_cole_2015mar16.pdf

Readers will note the argument that the currently proposed Guidance is arguably not TRIPS-compliant, and it is reassuring that my comments support a position adopted by the ABA.

For example, a categorical exclusion of naturally-occurring genetic sequences as also in the recent University of Utah opinion plainly contravenes TRIPS. Numerous examples of patents claiming naturally occurring sequences and granted by the EPO and as national patents by the German Patent Office are given. It is explained that the human sequences in University of Utah would be patent-eligible even under German law because the sequences are newly synthesized, have new utility because they enable PCR and because the new utility is set out as a feature of the claim.

Microorganisms are expressly set out as patentable in Article 27 of Trips. It is wholly unclear how the observation by the Federal Circuit in Roslin that naturally occurring organisms are ineligible can be reconciled with this. Examples of recent microorganism patents granted by the EPO are given.

Retention of the amazonic acid example is a continuing puzzle. How can it be right to teach new and inexperienced examiners the scientific absurdity that the activity of isolated amazonic acid is the same a that of the acid when present in leaves from the tree? A canon of construction is suggested that a decision such as Myriad should not be interpreted as covering a situation conceded during oral argument and therefore no longer the subject of dispute.

It is hoped that those attending the session will make it abundantly clear that progress has been far less than hoped.

Mr. Cole,

While I may want to sympathize with your bent towards patenting of the same things as found in nature, I cannot but help myself but point out that an even worse situation exists in the US.

In your second to last paragraph you use the phrase "conceded during oral argument and therefore no longer the subject of dispute." I do wonder if you recognize in this phrase a key element in the recent "Alice" case (of which, I will again remind you that "I told you so.").

At least with the doctrine of no patents for those things in the warehouse of nature open for all men, the doctrine is at least readily cognizable. Much more so than the wax-of-nose mashing that has to happen when a claim recognized as a machine somehow magically becomes not just an idea, but an undefined "abstract" one at that.

The alchemy involved in turning an item clearly in one of the statutory categories into a mere thought is simply a quantum leap over the alchemy that you want to see in differentiating a claim to something that is ALSO in nature.

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