Myriad at SCOTUS: Early Reaction

  • Eileen Kane: "There is a fair chance that the Court could side with the 2010 district court opinion, which found that the "claimed isolated DNA is not markedly different from native DNA as it exists in nature."
  • Kevin Noonan: "The decision [granting cert] is unsurprising in view of the (relative) specificity of the question presented and the overwhelmingly one-sided nature of the amicus briefing."
  • Rob Harrison: "It was a bit of a roller coaster day for US biotech Myriad Genetics as it share price plunged 9% on news that the US Supreme Court would be reviewing it '782 patent directed towards the BRACA1 and BRCA2 genes."
  • Julie Samuels: Myriad's Dangerous Patents and their Negative Impact on Women's Health
  • John Conley and Dan Vorhaus: "[A]ll we know for certain is that four justices (the minimum number needed to grant certiorari in any case) have something that they want to say about the matter."

115 thoughts on “Myriad at SCOTUS: Early Reaction

  1. Ned,

    IANAE is still maintaining that the sale for the patented item (yes, the one of the originating sale not to feed chickens or make tofu) does not include the right to plant that item because planting is a form of copying.

    He (clearly) still has not bothered with any facts of the case, as those facts just get in the way of how he wants to play his pedantic games. He (clearly) misses the fact that Monsanto has testified that the farmer selling his crop of secondary seeds with no strings attached is perfectly legal. Little facts that just get in the way (so his comment of “because that sale is not authorized” is clearly flat out wrong).

    Ned, I would also advise you that IANAE does not get tired of Calvinball face-spikes. It seems that he actually enjoys them very much.

  2. What I do not get, LANAE, is where the sale here ever becomes unauthorized.

    Monsanto’s original seed can be sold over and over again, that’s not the problem. The problem is here:

    So if a Monsanto authorizes the sale of seed to a farmer by a third party, that farmer as well has a right to plant the seed.

    When a farmer plants a seed, that is a deliberate copying of the seed. To make other seeds, that share the relevant trait. Which were not purchased or licensed from Monsanto. Which will infringe when they are sold, because that sale is not authorized.

    Use doesn’t include the right to copy. Not because planting is a foreign concept to people who buy bulk seed, not because seed can’t “self”-replicate when farmers do all the necessary work (same way an F-150 self-replicates on the mostly-automated assembly line), but because someone else has a right to exclude other people from copying. You know, like a patent, only the same.

    I agree there are problems if the patented gene is ubiquitous in the secondary seed market, and there’s no good way for farmers to identify it in their seed. But I think all those problems go away once a farmer sprays roundup and saves the seed from the plants that survive.

  3. I’m looking forward to seeing how you rationalize this one after Monsanto wins.

    I am NOT looking forward to seeing how you rationalize this one after Monsanto loses.

    That will be just more of the vacuous QQ’ing we already see.

  4. How would you treat someone who insists that he has a right to copy your patented invention for free because he makes a career of copying such things?

    You need to read the facts and not make a story that just sounds good.

  5. And in case you are wondering, the last paragraph at 5:52 means that I would answer the second question put to the Supreme Court, “Whether the Federal Circuit erred by creating an exception to the doctrine of patent exhaustion for self-replicating technologies?” in the affirmative, as the court did create a new exception which threatens to swallow the doctrine entirely.

  6. “The key distinction, which bears on our decision today, is between claims that recite ineligible subject matter, and no more, and claims to specific inventive applications of that subject matter. See Diamond v. Diehr,”

    but, but, but,… Bilski was supposed to crush the Diehrbots….

  7. LOL – quoting from the Perkins-Elmer rehash of Prometheus? Sorry, but that’s not very convincing.

    You still haven’t answered the question of why mental steps are allowed in claims, or how claims (sans mental mental steps) composed completely of elements old in the art are allowed given the logic you want to rest on, or even Paul Cole’s pointing out of the fallacy of the Prometheus set-aside.

    Your post here also does not provide the answer asked of you for months now (still running indeed) to square Prometheus with the case law it says is most on point.

    Oh, and I do love the additional self-defeat from Perkins-Elmer:

    “These exceptions make ineligible, for example, mental processes, see Gottschalk v. Benson, 409 U.S. 63, 67 (1972), and products of nature, cf. Diamond v. Chakrabarty, 477 U.S. 303, 313
    (1980).”

    D_mm, there’s that phrase again. I wonder what ever could they mean by that? /eyeroll

  8. that bogus theory that is seen nowhere else

    LOL. Try to keep up, little bro’.

    link to cafc.uscourts.gov

    Since Intema’s claims recite mental processes and natural laws, we must decide if Intema added enough to the statements of ineligible subject matter to direct the claims, not to the ineligible concepts themselves, but to applications of those
    concepts.

    We think not. The “measuring” steps are insufficient to make the claims patent-eligible…These steps tell the user “to engage in well-understood, routine, conventional activity previously engaged in by scientists who work in the field.

    If you think that analysis is substantially different from mine, then you are a m0r0n or a liar or both. Take your pick, anon.

  9. IANAE, I think you agree that if Monsanto sold a farmer seed that the farmer would have a right to plant the seed.  Contracts, permissions, and the like are completely irrelevant.

    Now think about Quanta.  If the patentee or his licensee sells the patented product, the sale is authorized.  The buyer then has the right to use.  Are we tracking here?

    So if a Monsanto authorizes the sale of seed to a farmer by a third party, that farmer as well has a right to plant the seed.

    What I do not get, LANAE, is where the sale here ever becomes unauthorized.  In all cases, the sale is by Monsanto or is authorized by Monsanto.

    We know the law of exhaustion only requires an authorized sale.  When there is an authorized sale, the patentee can no longer sue for infringement for use or for reselling.

    Use, of course, includes, as we discussed above, the right to plant.

  10. IANAE : “Which depends, I suppose, on whether the racemate was sufficiently integrated?”

    Well, as you know by now, new and useful process claims have a presumption of “integration” and are statutory unless

    1. The claims as a whole are a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101). Or as the CAFC says, manifestly evident.

    2. The claims begin with or include a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101). and add steps to apply it. In this case you have to further analyze the claims to see if the sum of the parts are doing anything different than when you look at each part individually.

    BTW, the Court has never referred to claims being “sufficiently” integrated. That’s like being sufficiently pregnant. Your claims are either “integrated” or not.

    Take a look at this example.

    Basically we have a claim that begins with heating a mold and putting some materials in the mold for cooking. Right there the claims are statutory and no post solution activity can occur. Even though some of the elements include math ( mental/thinking) steps. The claims as a whole are integrated because they do not begin with a bare Court created judicial exception.

    11. A method of manufacturing precision molded articles from selected synthetic rubber compounds in an openable rubber molding press having at least one heated precision mold, comprising:

    (a) heating said mold to a temperature range approximating a predetermined rubber curing temperature,

    (b) installing prepared unmolded synthetic rubber of a known compound in a molding cavity of a predetermined geometry as defined by said mold,

    (c) closing said press to mold said rubber to occupy said cavity in conformance with the contour of said mold and to cure said rubber by transfer of heat thereto from said mold,

    (d) initiating an interval timer upon the closure of said press for monitoring the elapsed time of said closure,

    (e) heating said mold during said closure to maintain the temperature thereof within said range approximating said rubber curing temperature,

    (f) constantly determining the temperature (Z) of said mold at a location closely adjacent said cavity thereof throughout closure of said press,

    (g) repetitively performing at frequent periodic intervals throughout closure of said press integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:
    1n v=cz+x
    wherein c is an activation energy constant determined for said rubber being molded and cured in said press, and x is a constant which is a function of said predetermined geometry of said mold,

    (h) for each repetition of calculation of said Arrhenius equation herein, comparing the resultant calculated total required cure time with the monitored elapsed time measured by said interval timer,

    (i) opening said press when a said comparison of calculated total required cure time and monitored elapsed time indicates completion of curing, and (j) removing from said mold the resultant precision molded and cured rubber article.

  11. And I notice that you STILL have not addressed my comments on the timing as explicated in Chakrabarty. – still on the run from that bit of logic, eh MM?

  12. then consider that your grasp on the issue of “dramatically altered properties” is extremely weak.

    My grasp is perfectly fine. It is your logic and your inane desire to fight the difference in kind (in name, yet describe that very thing yourself) that is extremely weak. As I have said – it’s quite humorous watching you trip all over yourself on the logic front of this argument. You don’t even have a clue as to whether or not I think Myriad’s claims do have “enough,” because you cannot get out of your own bumbling logic.

    AS to the clerks – you mean the same wones that provided Breyer with 101 Integration Expert’s theory instead of yours? LOL – Do you still have that link to the Office takeaway from Prometheus? Can you share it again?

  13. This would be the perfect time for you to be on the side of stronger patent rights, and somehow you can’t seem to pick a winner.

    LOL – it is opposite day: This would be the perfect time for you NOT to be on the side of stronger patent right (as is your want), and somehow YOU cannot seem to pick a winner.

    I, on the other hand, am still on the side of strong patent rights. I just happen to believe in the world of secondary markets and the fact that patent exhaustion happens when you sell an item encompassing your patented invention – even when that invention is of the self-replicating type.

  14. LOL – pure rubbish from you MM. Unintelligible gobbledygook. More accusing others as you wave around your own hands on that bogus theory that is seen nowhere else. As to the world of honesty – you are but fresh off the boat and obviously don’t know your way around too well.

  15. is there enough difference between what is claimed and what is in Nature’s warehouse.

    LOL. Right. And if you’re anon, you answer that question by waving your hands around and answering some equally vapid question (is it “different in kind”).

    To provide just one example of useful, predictive reasoning of the sort that anon and his trollfriends still reject, consider the following process claim:

    1. [transforming step]+[newthought]

    Question: is there a readily ascertainable fact about [transforming step] that will determine if this claim is ineligible in view of Prometheus?

    I know the answer. And I don’t need to know anything about the “claim as a whole”.

    Welcome to the world of honesty, anon. I know it burns you. Sunshine has that effect on some people.

  16. What they are doing (just like in Prometheus is looking at the claim as a whole to see if “enough” has been done to warrant the label “invention.”

    Nice try.

    In, Prometheus adding old conventional steps to a novel mental step (thinking about newly discovered “phenomenon”) did not make the claim eligible because people practicing the prior art infringed the claim merely by thinking new thoughts.

    Where is the parallel analysis concerning a novel composition of matter?

    NOT EVERY change does so dramatically alter the properties of that molecule.

    Have you ever tried to use a naturally occurring human chromosome (in a cell) as a molecular probe? According to you its properties are not “dramatically altered” relative to the claimed composition. Have you ever tried to use a naturally occurring human chromosome (in a cell) as, e.g., a molecular probe? Or as a tool for over-expressing a specific protein of previously unknown sequence in a sufficient amount to crystallize that specific protein? Let me know. Let me know if you know anyone who has done that. If you can’t answer the question, then consider that your grasp on the issue of “dramatically altered properties” is extremely weak.

    This is all going to be put before the Supreme Court and its clerks, by the way. For the most part, these people aren’t vindictive mouthbreathers who embrace horsesh–t like capitalizing phrases for the sole purpose of making them seem more meaningful than they actually are.

  17. That’s exactly what Bowman did and all he for was the runaround.

    How would you treat someone who insists that he has a right to copy your patented invention for free because he makes a career of copying such things?

    That’s why Monsanto is going to lose.

    Right, because this is the first time they’re asserting these types of patent claims. Best of luck to Infringing Farmer Number 42683.

    I’m looking forward to seeing how you rationalize this one after Monsanto wins. This would be the perfect time for you to be on the side of stronger patent rights, and somehow you can’t seem to pick a winner.

  18. See Univis Lens – the initial seed embodied the complete invention including – especially including – the invnetion’s ability to replicate upon normal (and the express purpose of the sale) use.

    Univis Lens stands for that principle, does it? The self-replicating thing?

    I suppose it would be forward of me to ask for a quote from Univis Lens supporting your proposition.

  19. Please direct all complaints to the Monsanto corporation.

    You haven’t read the brief yet, have you? That’s exactly what Bowman did and all he for was the runaround. That’s why this case is in front of the Supremes. That’s why Monsanto is going to lose.

    I suggest you make better suggestions.

  20. It really is as simple as that. Exhaustion doesn’t even enter into it.

    Except it does. The initial sale exhausts the rights in the self-replicating invention. See Univis Lens – the initial seed embodied the complete invention including – especially including – the invnetion’s ability to replicate upon normal (and the express purpose of the sale) use.

    It is as simple as that.

  21. In this case though Bowmans “copies” are not coming from the batch of originating seed, but rather from the commodity broker who imposed no such license conditions.

    Bowman buys a thing.

    Bowman makes copies of the thing. On purpose.

    The copies infringe the claims of Monsanto’s patent.

    Therefore, Bowman is an infringer.

    It really is as simple as that. Exhaustion doesn’t even enter into it.

    Please direct all complaints to the Monsanto corporation.

  22. In this case though Bowmans “copies” are not coming from the batch of originating seed, but rather from the commodity broker who imposed no such license conditions.

    IANAE, it would help your arguments if you were to actually review the facts of the case and make your arguments address the actual facts.

  23. by citing Global-TECh, I think it demonstrates that you are often a wild goose chase.

    Global-Tech was a case of someone buying a patented article from the patentee, and using it to make copies for resale. Nobody even questioned whether making those copies counted as an exhausted “use”. Why is everybody looking for plant seeds to have some special rule all their own?

    If Monsanto sells you the seed, I say you have a right to plant it.

    So does Monsanto. It’s right there in their standard seed sale/license agreement. You have the right to plant it. ONCE.

    If you’re only licensed to make a certain number of copies of a patented article, even defined in terms of a number of generations of copying, it’s pretty clear that making further copies would be unlicensed and would therefore infringe.

  24. IANAE, by citing Global-TECh, I think it demonstrates that you are often a wild goose chase.

    If Monsanto sells you the seed, I say you have a right to plant it.

  25. Just how desperate are you to repeatedly call yourself clever on the internet

    Funny, I have never called myself clever on the internet.

    Just how desperate are you to avoid the repeated Calvinball face spikes that happen to you (hint: you are not doing a very good job at that – is there a sense of scale as to that)?

  26. To paraphrase, IANAE self defeats over all things

    To paraphrase, you’re declaring victory over me in an exchange between two people who are neither you nor me. Just how desperate are you to repeatedly call yourself clever on the internet in the hopes that someday somebody will believe it?

  27. IANAE, is the Supreme Court going to really investigate what restrictions the patent law imposes on the rightful owner if a patented product? There are no restrictions …. at least, historically.

    Global-Tech v. SEB. Read it.

  28. There is an incredibly annoying semantic game being played by the opponents of patents to nucleic acid compositions. The goal of the game is get everyone to ignore express limitations in a claim and pretend that a mixture of molecules is identical to an isolated molecule within that mixture.

    No one is trying to do that. What they are doing (just like in Prometheus is looking at the claim as a whole to see if “enough” has been done to warrant the label “invention.”

    That “enough” by the way is exactly analogous to the difference in kind that induces the vomit reflex in you (for some unascertainable reason). Just as “it’s been known for ages that changes to a single constituent atom or “chemical bond” in a given molecule can dramatically alter the properties of that molecule, e.g., a single change can convert that molecule from an incredibly useful substance into a useless substance or a harmful substance,” it has also been known that NOT EVERY change does so dramatically alter the properties of that molecule. If the invention claimed does NOT have that characteristic, if it is not different in kind, then it simply is not the type of invention suited for the patent system.

    And if you haven’t re-read yet exactly how the Supreme Court noted the pertinent timing, you really should before you reply.

  29. Shall we revisit the threads prior to the Prometheus decision to see who better understands how “Judidical Exceptions” actually work

    See my post above about confusing reason and result.

    I notice that you still run away from explaining the reasoning of Prometheus in relation to the case law it cites as most on point (or worse yet, inserting your bogus theory that no one but you ever puts forth).

  30. This is certainly true in the case

    Logic Fail.

    It is never true “in the case” for the reason I posted at 10:28 AM.

    The result may coincide, but the reasoning is fallacious.

    You really should try to not confuse the two.

  31. IANAE: “Okay, I’ll type slower…”

    Troll: Shhh….It is better when you don’t type at all. No utility is the problem.

  32. “Maybe…

    …but maybe not.”

    This is true. It depends on if the added steps add anything significant beyond the sum of their parts taken separately.

    As for MM, it’s kind of sad rally. I think he is losing more than these cases.

    So get your pop corn and watch the meltdown continue…

    …or not.

  33. My overly subtle point was different

    To paraphrase, IANAE self defeats over all things – software patents.

    The irony is delicious.

  34. This sounds in our discussion of how the judicial exceptions apply across the board, regardless of the statutory class of the invention.

    This is easily seen in the Chakrabarty case, in which the Court basically said it didn’t matter whether the invention in that case was a composition or a manufacture.

    This will also be a point of slap down to the lower court (as I have already mentioned).

  35. The time sense you refer to at 2:41 and the time sense of 102 are world’s apart. As suggested over at PatentDocs, you really need to re-read Chakrabarty regarding how the time sense of 101 works.

    Let me know how that goes for you.

  36. Oh, and steps of isolating the DNA? That is post solution activity, as the isolated DNA is still just DNA.

    Maybe…

    …but maybe not.

    What I find hilarious about this discussion on multiple threads (even multiple blogs – he is no longer happy with limiting his rants of eplectic rage at Patently-O – I think the clampdown on outright lying is getting to him) is how empty MM is and how badly he trips over himself. The level of his argument skills is downright pathetic. The instant matter will turn on whether or not the Court thinks that invention is present, or analogously to Prometheus‘s correlation between process and Law of Nature to the composition here and the Product of Nature, is there enough difference between what is claimed and what is in Nature’s warehouse.

    It’s that simple. It’s the very essence of “different in kind” that MM refuses to accept (why? I have no idea what motivates him to not accept the law as it is).

  37. “But, then we get into the issue of preemption, do we not? What is preemption, but a patent that covers all practical uses of an an invention, not just the one disclosed.”

    Hello Mr. Heller:

    I do believe you are in error on “preemption”. An invention is allowed to preempt all uses of the invention providing, those uses have never been practiced before or are known in the art. This why you can have a patent on a pioneering invention.

    Now an invention is not allowed to preempt all uses of a judicial exception. And a judicial exception, by itself, is not a statutory invention.

    Hope this clears things up for you.

    Let me know if you have any questions. I am glad to help!

  38. LOL – and you may have heard of a first step (use) in this concept of “agriculture” you bandy about like the four syllable word makes your case for you (hint: it doesn’t).

  39. Dr. No, Severed foot?  Well was it severed by man?  

    I think the point I am making is that isolated DNA is a product of man, the result of a man made process.  It is not something found in nature.

    I think this passes 101 by itself.

    But, then we get into the issue of preemption, do we not?  What is preemption, but a patent that covers all practical uses of an an invention, not just the one disclosed.  A claim that wholly preempt is not limited in some fashion to the novel apparatus or physical process disclosed.  See, O'Reilly v. Morse.  

    I will agree in principle that "isolated DNA" literally covers all practical uses of DNA.

    But so does any composition patent.

    Composition patents are authorized by statute, and presumably, such a statute is not unconstitutional.

    Now if one goes one step further and says that one cannot have a patent on any composition that is isolated from nature, one has to observe that all compositions are isolated from products of nature (gas from oil, for example).  How is this a workable rule of law?

  40. IANAE, is the Supreme Court going to really investigate what restrictions the patent law imposes on the rightful owner if a patented product?  There are no restrictions …. at least, historically.  

    I don't think they will impose any implied conditions on use of a seed without explaining why a seed is an exception to the general rule.  
    If I buy a bullet, I can use the bullet, right?  If the patentee has a separate patent on firing a bullet, does the patent law say I cannot fire the bullet I own?  No it does not.  It says I have a implied license under the second patent, not that the second patent imposes any legitimate restriction on my use of the bullet.

    The seed situation seems like the bullet analogy with a patent on the bullet and a separate patent on the use of the bullet.  The sale of the bullet without restriction exhausts the patent in the one and grants a license to the second.

  41. it is only sold in the first place for one use.

    Yes, and that use is agriculture. You might have heard of it. It’s what farmers do so we have stuff to eat and to feed to other stuff we eat.

    Or did you think that farmers do it because they love seeing a field full of fancy grass year after year? And not the kind of fancy grass that would enable one to get that much enjoyment out of a field of fancy grass.

  42. So awesome. Let us pray.

    It’s scary to think that that might be the most effective thing you can do in this situation.

  43. Let’s not forget the nexus with the patent: it is only sold in the first place for one use.

    This makes any other use argument more than just weak.

  44. MM Wrote: ” After all, the holding in that case was crystal clear: a process of thinking about a natural phenomenon cannot be rendered eligible merely by the recitation of a prior old step, regardless of the eligibility of that old step”

    Hello MM:

    I have read the Prometheus case a thousands time by now. Just read it again in fact. I then followed that by doing a word search for “prior old step”. I even searched fpr “old step”.

    The results were …

    Nada!

    Zilch!!

    The old goose egg!!!

    No where in the four corners of the document is there a holding about old steps being ineligible. If you believe your mental steps test theories were the holding in the case you are very wrong.

    If not then provide me the exact quote please.

    :: Silence::

    Oh and BTW, as I read I did come across this exact quote from the opinion of the Court in that case.

    “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the
    equation into the process as a whole. 12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. Opinion of the Court Referencing Diehr.”

    Yes that is “integrated” as in “Integration Analysis”. You know the same Integration Analysis in the official Office Guidance?

    link to uspto.gov

    The same “Integration Analysis” you always run away from when asked to discuss or apply it to actual claims?

    Oh, and by the way. I agree with Dennis Couch, that “Integration” will not save a patent on a human organism, which is what DNA is.

    Dennis Couch wrote: “One exception to the cured-by-integration rule involves the patenting of human organisms.” link to patentlyo.com

    Fact is DNA is just a bare Law of Nature, or product of nature. And as the Court told you, when the claims as a whole, are nothing but a LoN, like isolated DNA, then the claims are nothing more than a Court created Judicial Exception and are not statutory subject matter.

    Oh, and steps of isolating the DNA? That is post solution activity, as the isolated DNA is still just DNA.

    So MM, no matter how you slice it, you lose on this issue.

  45. Socky McSockpuppet: if I discover a severed foot laying in the grass can I get a patent on that since, a severed foot is distinct from anything in nature?

    In fact, severed feet are old “in nature”. Also, no specific, substantial utility.

    a severed foot is distinct from anything in nature?

    On the contrary, severed feet are old. They have existed “in nature” for a long time.

    nature does not grow a foot separate from a leg or limb right?

    This is the “nature grows it” theory? Nature doesn’t “grow” teeth separate from a mouth. So an isolated tooth is patentable under your “nature grows it” theory? Fascinating.

    I will side with the “Store House of Nature” crowd on this.

    Honestly, I think it’s great that deep thinkers like you pile onto the ACLU’s side. Keep it up and keep using capital letters whenever you talk about nonsense like “the storehouse of nature”. It’s super persuasive that way.

    natures DNA

    “That oligo was invented by the Master Creator!”

    So awesome. Let us pray.

  46. Hmmm… well if I discover a severed foot laying in the grass can I get a patent on that since, a severed foot is distinct from anything in nature?

    After all, nature does not grow a foot separate from a leg or limb right?

    I will side with the “Store House of Nature” crowd on this. If man does not create the DNA then man can’t get a patent on the DNA, period.

    It does not matter how pretty and clever man is at slicing up the DNA, it’s still natures DNA.

  47. the normal use for seed is to plant.

    That may be the normal use of a seed for the plant, but the normal use of a seed for a human, and the reason agriculture is a vocation in the first place, is for the seed to be/become consumable by humans.

    Your argument is particularly weak in this case, because we’re talking about seeds that are directly consumable. If we were talking apple seeds or something, I might be able to see your point. In this case, planting the seed is purely and clearly part of a human-controlled manufacturing/copying process of a consumable good.

  48. I think that’s a pretty compelling argument, and is simple enough to be the right answer. I’d bet a small sum that SCOTUS gets to the same place.

  49. IANAE, when make and use blend together, as here, what is the law?

    How is this “blending” any less trivial than when you “use” a patented deep-fryer to make a cast of it or whatever is required to produce the copies?

    There are lots of ways to use seed that don’t make more. Those uses are completely uncontroversially non-infringing. Making unlicensed copies of a patented article has always been infringement, even if you call it “using the patented article to make copies”.

  50. IANAE, when make and use blend together, as here, what is the law?

    One cannot be so confident that you are right. With machines, a human has to make. Here, the use of the seed, lawful, automatically makes the plant and further seed.

  51. MM are trying to import a time sense into the Judicial Exceptions of 101 and quite ignoring how those Judicial Exceptions actually work

    Shall we revisit the threads prior to the Prometheus decision to see who better understands how “Judidical Exceptions” actually work (nice job with the capital letters, by the way — no doubt you feel bigger when you type them)? Let me know, anon.

    Or maybe we can just recognize that the Supreme Court in Prometheus itself recognized that there was an element of “time sense” in 101. After all, the holding in that case was crystal clear: a process of thinking about a natural phenomenon cannot be rendered eligible merely by the recitation of a prior old step, regardless of the eligibility of that old step.

    Now go ahead and pretend that you have no idea what any of those words mean, anon. You know, like you do every time that you are called out on your nonsensical chattering.

  52. In order for any invention to be patentable it has to be non-obvious, if it’s easily reinvented it isn’t non-obvious, ergo there isn’t a problem here.

    This is certainly true in the case where the problem is well-known (“we need to identify the mutation responsible for breast cancer”), there are a myriad (pun intended) of well-known solutions (sequencing of individuals afflicted with the genetically-linked disease and the relatives of those individuals, analysis of their sequences, etc) and the likelihood that within a short time frame numerous parties will reach the identical conclusion (because it’s a matter of scientific fact).

    This is true for most of the major known genetic disesases, by the way. It would be even more true if we spent more money on research and less money blowing up brown people with flying robots.

  53. I don’t think I’ve ever seen a single thing you have written have any merit.

    No, you’ve never seen the merit. Neither has anon. I don’t generally view that as my problem to solve.

    OK. Let’s get technical. Put “human genes” for “abstract.”

    Okay, I’ll type slower. It’s the word “human” I take issue with.

  54. The vision of IANAE brings to my mind worthless scummy troll.

    LOLOLOLOLOLOLOL. I think you need a vacation, NWPA.

  55. I also notice troll child that you are not making predictions but trolling….

    You have no utility IANAE. The vision of IANAE brings to my mind worthless scummy troll.

  56. I think the rightful owner of the seed of a patented plant has the right to use that seed for all purposes and that means he has a right to plant that seed.

    It’s very well settled that the owner of a patented article does not have the right to make copies of that article for resale.

    Sure, he can resell the original article he bought. No problem. But that’s not the fact pattern here.

    The law on this point is perfectly well developed already, and as you say, there’s no reason to carve out an exception for seeds. Or for anything that “self”-replicates with such a high level of human intervention that any farmer would deck you for even suggesting that his crop grows itself.

  57. >>Now, the Supreme Court has granted the petition ?>>for writ of certiorari and will hear the case — >>limited to the single question: “Are human genes >>patentable?”

    So, in the new Patentlyo a troll like you IANAE should be banished. I don’t think I’ve ever seen a single thing you have written have any merit. And, you seem proud of that. A sick sad little troll are you.

    OK. Let’s get technical. Put “human genes” for “abstract.”

  58. so much crying about it. Oh right, I forgot: they’re actually just a bunch of whiny–ss titty-babies

    From the site’s biggest whiner, bar none, the irony is delicious.

  59. The Federal Circuit seemed fascinated by the chemical differences issue, the breaking of covalent bonds and the like

    There’s a very simple and compelling reason for that “fascination”, Ned: it’s been known for ages that changes to a single constituent atom or “chemical bond” in a given molecule can dramatically alter the properties of that molecule, e.g., a single change can convert that molecule from an incredibly useful substance into a useless substance or a harmful substance. This is true of DNA as well, since it is, after all, just another chemical composition.

    It is the properties, the utility of the purified form which is sufficient.

    There is an incredibly annoying semantic game being played by the opponents of patents to nucleic acid compositions. The goal of the game is get everyone to ignore express limitations in a claim and pretend that a mixture of molecules is identical to an isolated molecule within that mixture. The game involves repeating ad nausuem, over and over again, that the molecule recited in the claim is the “same molecule in the mixture” or (even worse, but more accurately) “its the same molecule that’s covalently bonded to this other molecule”. That’s true, in a pedentic sense. But it’s a complete red herring (more accurately, a bald-faced lie) when we are assessing the “man-made” novelty of a patent claim to a composition that is IRREFUTABLY not identical to the mixture.

    To the extent the ridiculous “change in kind” analysis can be comprehended at all, it’s indistinguishable from an obvious analysis. As you point out, Ned, it’s the properties (the useful properties that were not available to the public prior to the inventor’s contributions) of the claimed composition that make all the difference, just as it’s the previoulsy unappreciated properties of an isolated chemical species that allow it to be patentable over an earlier disclosed genus. Perhaps the ACLU will tackle that aspect of the law next. It wouldn’t surprise me. I wonder if the t–b–gers here will line up with the ACLU in that instance.

    It’s still baffling to me that they are suddenly clamoring for 101 to be applied in novel ways after so much crying about it. Oh right, I forgot: they’re actually just a bunch of whiny–ss titty-babies who think this case represents some kind of ironic “payback”. Weirdest. People. Ever.

  60. On Monsanto for a momement:

    I think the rightful owner of the seed of a patented plant has the right to use that seed for all purposes and that means he has a right to plant that seed.

    Typically, as well, the rightful owner of a patented product has the right to sell it as well. The question is whether we should make an exception for seeds. But if we are to make such an exception for seeds, where in the statutes is there authority for such an exception?

    All this argues is that we really need a separate statute that deals with sexually reproduced plants and animals.

  61. I think this is the same as the Lithium question the courts keep discussing.

    Lithium does not exist in pure form in nature. Someone figures out how to isolate the compound into a pure metal. Can they claim pure, metallic Lithium?

    The Federal Circuit seemed fascinated by the chemical differences issue, the breaking of covalent bonds and the like. This was enough for Lourie, clearly. The composition claimed IS chemically different from anything occuring in nature, and this was enough for him.

    But is this even required? Hand was convinced a purefied form was distinct. So was the B12 court. Chemical differences are not required in those cases. It is the properties, the utility of the purefied form which is sufficient.

    May I suggest that both are right, Lourie and Hand?

  62. Used as a code by humans to make something in a testtube vs. used by a cell to make something in a cell. You couldn’t use the code by humans without figuring out where it is on the DNA and what it is, and slicing it off.

    No, it is called novel and is right in 101.

  63. Plug in “human DNA” for “abstract” in the Bilski opinion and you will have about what this opinion is going to look like.

    That should be an interesting read, considering that I don’t think Myriad has a single claim that reads on human DNA.

  64. Hmm. I wonder what separate utility that would be. Used as a code vs. used as a code. And “never existed in all of time”. Gosh, that’s a long time. Is that a new standard?

  65. Abstract == Human DNA in regards to in re Bilski.

    Plug in “human DNA” for “abstract” in the Bilski opinion and you will have about what this opinion is going to look like.

    “human DNA” is another magic word like abstract, no structure, law of nature, etc.

  66. Thanks agent 99!

    When you get to 18 mers, however, you get to numbers like 68 billion, which might be possible to make (and would certainly be possible to print out)

    Exactly. I assume that would be a trivial number of sequences for a supercomputer to poot forth. So maybe it “blows up” in supercomputer-exploding shards when we start talking about all 30 mers? Or can we make it to all 50 mers without difficulty? Certainly the information doesn’t have to be “printed”. It just needs to be “stored” in a manner accessible by the public.

  67. LOL. To determine whether something is “different in kind” you need to shake Learned Hands knuckle bones in a cup then roll them onto a velvet cloth. If two of the bones are touching each other, then the thing is “different in kind.”

    The other way you can tell is simply to go online and see if the thing can be found in Nature’s Warehouse.

    link to natureswarehouse.net

    They’re located in Theresa, NY.

  68. if it’s easily reinvented it isn’t non-obvious

    You are confused by what the legal term non-obvious means. The term implicitly includes a warning against hindsight reconstruction and your “if it’s easily reinvented” belongs to that category of reasoning.

  69. whether or not the isolation works to bring about something different in kind.

    Which depends, I suppose, on whether the racemate was sufficiently integrated?

  70. In order for any invention to be patentable it has to be non-obvious, if it’s easily reinvented it isn’t non-obvious, ergo there isn’t a problem here.

  71. and patents her way

    The method is definitely patentable. The questions regarding the product being answered (in the affirmative) are fact-specific and depend on whether or not the isolation works to bring about something different in kind.

    This indeed is established law.

  72. What is different, when it comes to molecules of DNA that contain genes?

    And why isn’t it equally different for Monsanto, whose gene patents have been in litigation all their lives, with lots of people having legitimate standing to challenge their validity?

    I think we all know the answer, but nobody’s willing to admit that these are simply ordinary patentable molecules that hurt people’s feelings.

  73. MM,

    There are currently available arrays (in patents) to every 10 mer and every 12 mer. (4 to the 12th power is 16,777,216 which is a small enough number of different oligonucleotides that they can be put on currently available commericial arrays). When you get to 18 mers, however, you get to numbers like 68 billion, which might be possible to make (and would certainly be possible to print out) but would only have less than a 1/20 or so chance of being found in the human genome).

    However, if you already have the sequence, and a standard GCG type program for identifying regions of interest, then the numbers are much smaller, because there are only 982 different possible 18 mers in a 1000 nucleotide sequence.

  74. Suppose nature includes a “handed” molecule, a carbon atom with four limbs arranged in 3D space around the carbon each such limb carrying a different other atom, so that we are looking at a right-handed and a left-handed molecule. In natural racemic mixture of the two, the left-hande and right-handed variants are present in equal proportions. It has a therapeutic effect. Everybody knows there are present the two “enantiomers” but nobody can find a way to “isolate” them from the racemic mixture.

    Then some clever chemist finds a way to separate the enantiomers and patents her way. Can she claim the enantiomer per se? If so, how do we construe a claim to “Enantiomer X”? Is it anticipated by the racemic mixture, containing 50% enantiomer x? Or is it implicit that it is limited to the “isolated” enantiomer X?

    These questions have already been asked and answered. And what’s more, in the affirmative. What is different, when it comes to molecules of DNA that contain genes?

  75. Abstract == Human DNA.

    Is human DNA more abstract than other DNA? Because I think you’d have a hard time telling them apart, once they’ve been isolated.

    Or are we saying that humans are part of nature but other life forms aren’t?

  76. I am predicting that the outcome is going to be very much like Bilski. Abstract == Human DNA. The issue is whether or not your claim is particular enough as not to include the Human DNA itself.

    I will refine this….but you hear it here first.

  77. No you don’t. You have something new. A code in isolation that can be used for separate utility. I wonder David if you have had any experience with innovation. The fact is that this new slice has probably never existed in all of time.

  78. I think that Eileen Kane may have it right. I think that the patent law community may have created and been living in a bubble, much the example set by Mitt Romney and team. If the 2010 decision is read from a real world perspective, and a biologically informed perspective …. it says that DNA functions as a code. You isolate the code. You have the code found in nature.

  79. Sorry Ned, but once again you and MM are trying to import a time sense into the Judicial Exceptions of 101 and quite ignoring how those Judicial Exceptions actually work. Your own emphasis on “prior art” should tell you that you have wandered from the land of 101 into the land of 102. Quite simply, you are not allowed to have patents on anything in Nature’s warehouse, no matter when that item is discovered to be in Nature’s warehouse.

    It really is that simple.

  80. If you haven’t already read Myriad’s brief opposing cert, you should. It’s about as good as a brief gets (far better than any brief I saw from either party in the Prometheus case):

    http://patentdocs.typepad.com/files/brief-in-opposition—myriad-et-al-1.pdf

    I do quibble with one point – on page 29 they write “Indeed, no appellate court has ruled any composition claim ineligible since § 101’s current formulation was included in the 1952 Patent Act.” That’s not true. In 2005 the Federal Circuit held in In re Fisher that an “expressed sequence tag” (yes, another nucleic acid composition) from maize was ineligible for failing to meet the “specific” utility requirement of 101. The argument was that such tags were merely “objects of research” and possesed no properties that could distinguish them from any other similarly isolated composition. (Rader dissented, fyi).

  81. I think the question is wrong, as the the claim is not to the gene itself, but to man made versions that are chemically distinct.

    I think it fair to say that if one reviews every prior case on a naturally occurring product where the patent was invalidated, the claimed product was known or was man-made version of something that was known. Public knowledge or even public use was the real basis for invalidating the patent. One cannot withdraw from the public knowledge it has.

    Malcolm illustrates this principle quite well when he proposes the hypo about whether a patent on an apparently novel composition is to be invalidated upon the later discovery that the composition appeared in nature. There is no such case. The essence of prior art is public knowledge or public use. Nothing less should invalidate a patent.

    Hopefully, this case will finally get to the heart of the matter. Clearly if the claimed composition is distinct from its natural form, it is novel. If the natural form was unknown, the composition is also non obvious.

  82. I’ve discussed before and will reserve mentioning again until an appropriate time

    When outright lies are once again tolerated on this blog, and “policy” is allowed to misrepresent law and facts.

    IMHO.

  83. These “software patents” are (and should remain) patentable, despite the fact that they are “just software.”

    I don’t have a problem with protecting “nifty” developments in computer programming. But for a number of reasons that I’ve discussed before and will reserve mentioning again until an appropriate time, the patent system as it exists presently will never be the appropriate system for such protection. IMHO, of course.

  84. LB Sorry for the confusion, I wasn’t commenting on the complexity of whatever it is that you biotech people do at all – I’m not qualified to do so.

    Actually just about any 5 year old is qualified to do the analysis I proposed (“Identifying whether any given polynucleotide of any length is among one of the theoretically possible variations”). You simply look at every nucleotide in the sequence. If there is a non-canonical nucleotide anywhere in the sequence (i.e., a nucleotide other than A, G, T, or C) then the sequence does not belong to the group I identified.

    In that sense I wonder if it would suffice for disclosure purposes to simply create a “searchable database” that “virtually” contains all such sequences, i.e., a program that one could query with a genetically relevant polynucleotide composition (identied by its sequence of A, T, G, and/or C nucleotides) and it would let you know with 100% accuracy whether the composition is a member of the class of all polynucleotide compositions with a length between 2 and, say, 1000 bases.

    Probably not. Still food for thought, though, as we contemplate whether the features of DNA that make it “different” from other biologically relevant chemicals merit still MORE ways to find claims to novel DNA compositions unpatentable. Because you know there are a great deal of special rules already in place, far more so than for any other types of compositions.

  85. Identifying whether any given polynucleotide of any length is among one of the theoretically possible variations is not a “high complexity” problem at all.

    Sorry for the confusion, I wasn’t commenting on the complexity of whatever it is that you biotech people do at all – I’m not qualified to do so.

    My overly subtle point was different: IANAE proposed a problem (how to list all possible sequences 1000 letters long) that is extraordinarily complex from the point of computational complexity theory. His straightforward but impractical solution for solving it demonstrates how intractable these problems can be in the real world, even if every individual step is simple. (What could be simpler than counting in binary?) There are lots of computational problems more interesting than counting that are enormously complex (computationally) in practical fields such as wireless communications, cryptography, chemistry, biology, etc. Some of these problems are solved in human-scale time frames using really cool algorithms and computer tricks. Sometimes these solutions are “obvious” because similar tricks have been used before to solve similar problems. Sometimes the solutions are not obvious, because either the solution uses new algorithms/tricks or because the problem needs to be reformulated before old algorithms/tricks will work. These “software patents” are (and should remain) patentable, despite the fact that they are “just software.”

  86. It’s sort of a key issue, you know: understanding the scope of the claim before addressing whether the claim reads on ineligible subject matter. Yes, sort of important, I think. A tad relevant, perhaps

    Yes, please Prof. Crouch, do as MM asks. After all, if MM can’t be bothered to actually read the cases, or your commentary before he announces THE proper view, how is supposed to have THE proper view without the claim construction for “isolated?”

    /off sarcastic-but-oh-so-on-point comment.

  87. high-complexity problems

    Identifying whether any given polynucleotide of any length is among one of the theoretically possible variations is not a “high complexity” problem at all.

    And my solution to the “problem” of achieving a disclosure of all the sequences is anything but efficient and elegant. ;) That said, there must be some length of polynucleotide that can be fully disclosed in the manner I’m suggesting within a reasonable time. All possible ten-mers? All twenty-mers? I understand that it explodes at some point but it still seems that a giant swath of practically applicable sequences for detecting mutations can be “tanked” in this fashion.

    I assume everyone is aware that applicants in this area and related areas already file applications disclosing tens of thousands (and more) different sequences and have done so for years for the sole purpose of poisoning the waters for competitors (and non-competitors).

  88. Still, it does say something about the “obviousness-to-try” of even short nucleotide sequences.

    It certainly does. It might also suggest something about the worth and non-obviousness of computer-implemented inventions that solve high-complexity problems (maybe not 4^1000 complex, but still amazingly complex) in efficient and elegant ways.

  89. 600 zeroes, Malcolm. A billion years has only 16 zeroes worth of seconds in it.

    I’m glad somebody around here has a sense of scale.

    It was only an order-of-magnitude approximation. You can also save a factor of four by noting that the correspondence between binary bits and ternary bits is arbitrary, and lopping off the first four bits. You could save more, but not easily in terms of running a counter. I guess the best way would be to run all the 100-nucleotide sequences and declare that any ten of them could be combined, but that’s still 60 zeroes worth of time. Time we don’t have.

    As for the shorter sequences, they’ll all be in there somewhere. No need to repeat them. Even though the bits won’t be “isolated”.

    Still, it does say something about the “obviousness-to-try” of even short nucleotide sequences.

  90. 600 zeroes, Malcolm. A billion years has only 16 zeroes worth of seconds in it. Assume that your ten supercomputers together can do something 10 trillion times a second – that gets you another 13 zeroes. You are still short 571 zeroes. And IANAE’s technique only gets you the sequences that are exactly 1000 in length. To get all the shorter ones as well, I think you’re talking about 690 zeroes or so.

    You’re going to need a better algorithm. Or more supercomputers.

  91. If the claim is to isolated DNA, how does one infringe the claim if they apply the DNA in a cell so that it is not isolated?

    Simple. There is another claim that covers: “An engineered human cell in vitro, comprising [the same DNA molecule recited in the isolated composition claim].” Those cells are also recited in the broad method claims that the Federal Circuit found eligible and the Supreme Court has declined to reverse.

    Seems to me that the folks who want to practice with the DNA without paying royalties, just need to keep it combined with something else so it is not isolated.

    The term “isolated” in claims such as these typically refers to “isolation” from the chromosome, isolation from other cellular components (e.g., nucleases and other molecules that would tend to destroy the molecule), and isolation from competing nucleic acid molecules. The term is not typically construed to exclude other chemicals such as water, stabilizers, etc.

    It’s a claim construction issue and an important one. For obvious reasons, it’s an issue that should have been dealt with in crystal clear fashion by the lower court(s) already. Did that actually happen? Maybe Dennis can post the court’s construction of the term “isolated” when he revisits this case. It’s sort of a key issue, you know: understanding the scope of the claim before addressing whether the claim reads on ineligible subject matter. Yes, sort of important, I think. A tad relevant, perhaps.

  92. I do have a question about this patent.

    If the claim is to isolated DNA, how does one infringe the claim if they apply the DNA in a cell so that it is not isolated? Seems to me that the folks who want to practice with the DNA without paying royalties, just need to keep it combined with something else so it is not isolated.

  93. LOL. Just to be clear, are you suggesting that it would take a supercomputer (or ten supercomputers working together) a billion years to pump out all possible sequence variations in polynucleotides of 2 to 1000 bases in length?

  94. It’s pretty bad when they break into my home and remove the GRAY off line 10 I think it was on the back. And it’s pretty bad when Ray is in Lorraines house when they steal my empty Applications that I copied. And then he tells me Dutie is living in VA., and he hates her. So I look at the ancestry logs up here. And I find him and edna were from Paennsylvania and so is Mary. so that tells me Dutie is there as me. or maybe Mary? I know maey did live there. Louise told me. Louise lived there too… I woder why HAHAHAHAHAHA. SHE LAWAYS LOVED GETTING IN THE MIDDLE OF IT ALL. Am I getting close. Ray i know you are the one that looked at my Files. And I know you are the one that made my Application disappear. So obviously when you lie about where you are living as you said MA., and you lie about Dutie. Well then Ray you are just a LIAR. don’t worry ray i am only a stones throw away from all of it.
    And if you think my rights to free speech are only met by going to the Library. well you had better think long and hard.

  95. A supercomputer could probably spit them out … not sure how long it would take or what the size of the file(s) would be

    While we’re keeping things that simple, it takes two binary bits to code for one of four base pairs, so you could simply take a 2000-bit counter, and print out the result every time it ticks.

    You’d be done after 2^2000 clock cycles, which has about 600 zeroes at the end of it and is way longer than the age of the universe, and you’d need that many times 2000 bits to store the results. But at least you’d have a computer-readable medium with lots of bits on it, which could get a “general purpose computer” to do virtually anything with the right OS.

  96. Paul: That is often not easy, and impossible for anything that can be … easily independently re-invented by someone else.

    For obvious reasongs, patents are the wrong tools for promoting progress in such “things”.

    Since you brought up: an extremely compelling argument for denying patent protection to certain minimially-defined polynucleic acid compositions (i.e., compositions defined solely by their sequence) is that given the small number of different coding molecules (four, if we keep things simple) one could argue that all possible polynucleic acid compositions between 2 and 1000 nucleotides in length are effectively “known”. A supercomputer could probably spit them out … not sure how long it would take or what the size of the file(s) would be but that would put an end to this issue permanantly without needing to dive into any “product of nature” silliness.

    *Such molecules are trivial to make and they all have a general and very practical use (albeit a patent-ineligible use, absent more information: they each can be used to detect their complementary sequences).

  97. wjh: They may nevertheless say: put to a novel use (e.g., not what nature uses it for) or used in a novel product, system or method can still be patentable.

    The Supreme Court has already denied cert to reverse the eligibility of a method that is otherwise ancient xcept for the recitation of a novel (but possibly ineligible) composition of matter [i.e., the claimed composition of matter].

    Think about that.

  98. Eileen Kane: There is a fair chance that the Court could side with the 2010 district court opinion, which found that the “claimed isolated DNA is not markedly different from native DNA as it exists in nature.

    Professor Kane was also “surprised” that the Supreme Court took the Prometheus case so take her prediction here (such as it is) with a grain of salt.

    From Dennis’ link, I learned that Professor Kane is opposed to the patenting of nucleic acids. At least, that appears to be her position since her “reasoning” relies on some assumptions that are rather odd for someone with her background (Ph.D. in molecular biology).

    Specifically she states at the linked page: At stake in AMP is how to define the product of nature doctrine in modern biotechnology – whether genes are to be defined by structure (the chemistry argument) or function (the genetic argument).

    I would humbly suggest that when the novel structure of the compositions is described in the claims (as is the case for the compositions at issue here) that those claimed compositions be “defined structurally” (whatever that means) for the purpose of the “product of nature doctrine” (whatever that is).

    Professor Kane undoubtedly understands the following fact: polynucleic acids are complex chemical compositions with a nearly infinite number of “properties” and “functions”, only a fraction of which will ever be appreciated by humans. It was only fairly recently (in the big scheme of things) that certain polynucleic acids were discovered to have enzymatic activity (Nobel Prize to Tom Cech and Sydney Altman in 1989). One of the many properties of certain polynucleic acids is “the ability to bind to a complementary strand”, and even the degree to which that property is usefully possessed by a given polynucleotide varies depending on the specific structure (i.e., “sequence”) of that polynucleotide and any modifications that may have been made to that polynucleotide.

    Professor Kane knows all this. So my question for Professor Kane is the following: how does her “ineligibility theory” for nucleic acids deal with the situation where a novel, non-obvious polynucleic acid composition with a remarkable therapeutic property later turns out to be embedded in the chromosome of a single human being? Assume there is no known function for the sequence in this human being.

    Does this composition become an ineligible “product of nature” according to her theory?

    I have not seen the issue directly addressed by her but perhaps I’m missing something. It’s an important question because a poorly articulated test for a “product of nature” will waste a great deal of time. To consider one additional example even further removed, a polypeptide sequence (e.g., a vastly improved form of insulin) would seem also to be rendered ineligible under many of these half-essed “product of nature” theories when an identical (or similar?) sequencer is found as part of another, much longer protein, even where that protein has a completely separate function.

    [For the record, I do understand the compelling policy arguments for limiting the enforceability of patents that claim compositions which place obstacles in the paths of research into human biology; my concern is to avoid the creation of a pointless legal doctrine for ineligibility of compositions that rests upon ignorance, falsehood and hysteria; the ACLU briefs and the briefs of many amici are repleat with such]

  99. I think the SCOTUS is very likely to hold that DNA merely extracted from the larger sequence is unpatentable. But that’s not really saying much.

    They may nevertheless say: put to a novel use (e.g., not what nature uses it for) or used in a novel product, system or method can still be patentable.

  100. I would like to see your trade secret for your clients increasingly outsourcing R&D to professors and their low-wage grad students yet keeping any of them from EVER publishing [essential for trade secrets] valuable inventions they need to publish for their professional careers. It is hard enough getting them just to delay publication long enough to fast file a patent application. Furthermore, many if not most of the grad students are not even U.S. citizens.
    Likewise, after a diagnostic test becomes commercially successful, how difficult will it be for a ruthless foreign competitor to persuade with enough cash one of hundred of low paid lab technicians or janitors to to steal some reagents, test strips, etc. for many diagnostic tests?
    Your client may think they should have been advised to get a patent, especially since most diagnostic tests that involve significantly more than mental steps are highly likely to remain patenable.

  101. That may not be an unreasonable conjecture considering the prior Sup. Ct. muddling of 101 with 103 to reach a decision.

    To quote some other regular blog contributor:

    Whatever

  102. It is difficult to design and keep a secret. That is why you need trade secret lawyers. I will not tell you how because it is a trade secret. Haha…

  103. Re: “Eileen Kane: “There is a fair chance that the Court could side with the 2010 district court opinion, which found that the “claimed isolated DNA is not markedly different from native DNA as it exists in nature.”

    That may not be an unreasonable conjecture considering the prior Sup. Ct. muddling of 101 with 103 to reach a decision.

    Re: “rely more on trade secrets protection [than patents] in the future”

    While the AIA does provide increased defensive protection for trade secrets from later-filed patents of others, trade secret protection is only effective as long as one can actually keep something secret. That is often not easy, and impossible for anything that can be back-engineered or easily independently re-invented by someone else.

  104. The diagnostic industry may need to reply more on trade secrets protection in the future.

Comments are closed.