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« Ex parte Jung (PTAB 2015) | Main | IPO Webinar on After Final Consideration Pilot »

November 12, 2015


"this panel seems to indicate that these types of claims, in this context, may recite the ineluctable "something more"

We're talking about "singling out", right?

"Singling out" requires (1) testing a population, (2) identifying members with a characteristic and (3) treating those members differently.

If I test you for "gene X" using public domain methods and you don't have "gene X" and I don't treat you (for whatever reason) I can't possibly be infringing any valid eligible patent.

Now let's say you have "gene X". You know it because someone else tested you for it. You tell me that you read in a journal that if you have "gene X" then you are more likely respond favorably to public domain treatment Y. I treat you with public domain treatment Y because that's your preference. Again: there is no way I'm infringing a valid eligible patent by treating you with a public domain method because that's how you want to be treated.

You should think about these issues, Kevin. They're important to everyone. By "everyone" I mean the public -- you know those ordinary people who don't worship patents like you do and just want to get some decent treatment without paying license fees to a zillion "this gene correlates with this treatment" patent holders.

It's not even funny that you seem unable to discuss the issues frankly with your readers.

Just because something is not obvious doesn't mean it is eligible.

Surely the same judges would say that drug X working better in females... is a natural phenomenon. And adding the step of treating with a known drug would not add significantly more than conventional methods.

MM: you analysis fails at this assumption:

"You tell me that you read in a journal that if you have "gene X" then you are more likely respond favorably to public domain treatment Y."

As I have said many times, thinking such as yours will inevitably deter publication of such correlations, or in the alternative restrict this type of diagnosis to large urban centers and teaching hospitals. Or just ensure that megadiagnostics companies (that don't need patents) expropriate this information and charge what the market will bear indefinitely.

I think the world I advocate is more equitable but reasonable people can differ.


I would agree except that Judge Dyk said "Singling out a particular subset of patients for treatment (for example, patients with a particular gene) may reflect a new and useful invention that is patent eligible despite the existence of prior art or a prior art patent disclosing the treatment method to patients generally."

He posited patent eligibility, and whether the Supreme Court will overrule him should there ever be such a case is beyond my powers to apprehend.

Thanks for the comment

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