Guest Post: Nine Reasons why the Supreme Court Should Side with Myriad and Affirm the Patenting of Isolated Human Genes

Guest Post by Benjamin Jackson, Senior Director of Legal Affairs at Myriad Genetics, Inc.

The Myriad Case: A Golden Opportunity to Bring Clarity and Fairness to Subject-Matter Eligibility

Two weeks ago the US Supreme Court heard oral argument in the landmark case of AMP v. Myriad Genetics. The Justices appeared engaged in the argument and seemed to be genuinely seeking understanding of the science and the potential impact of any decision they might take. Several specific points emerged from the argument that warrant further discussion:

1. What Does "Isolation" Really Mean? Some Justices seemed to struggle with what is involved in "isolation" under the patents. This is the most critical issue in the case as a correct understanding of this word leads to the inescapable conclusion that the claims are directed to human-made inventions rather than what exists in nature. Regardless of any meaning used in the Petitioner's arguments and those of prominent amici such as Dr. Lander, "isolation" as defined by the patents requires that a new chemical entity be created either synthetically from scratch or by chemically/structurally modifying an existing molecule. The patents explicitly define "isolated" DNA as removed from its natural environment, whether that environment be in the nucleus or, as the Lander brief emphasizes, floating around outside the cell in someone's blood. But isolation under the patents is not just "snipping" molecules as they sit in their natural environment. Isolation under the patents also requires purification (i.e., concentration) of the newly created molecule out of the interfering milieu.

What is ignored in ACLU's arguments is that purification is a critical element of what it means to "isolate" something under the patents. The Lander brief calls purification of DNA routine, but only in the context of randomly purifying all nucleic acids out of a sample. "Isolation" under the patents requires specific, targeted purification/enrichment of BRCA1- or BRCA2-related molecules, which was not routine or even possible before Myriad's invention. Under this proper understanding of everything that "isolation" under the patent requires, ACLU made Myriad's case by conceding in their reply brief and in oral argument that purification to yield a significant new utility is sufficient to warrant a patent. Some Justices seemed to agree: A molecule sitting in a leaf of an Amazonian plant is not "new" or patent-eligible, but it becomes both once it is purified and concentrated into a useful form. Similarly, DNA in its natural environment, whether whole in the cell or fragmented in the blood, is neither new nor patent-eligible, while a DNA molecule chemically modified and purified by man is both.

2. Splitting the Baby Doesn't Work Out Well for the Baby. Some see patent-eligibility for cDNA and not isolated genomic DNA, advocated by the Department of Justice, as a compromise position that the Court is seriously considering. I am hopeful that instead the Court has merely recognized that cDNA is so clearly patent-eligible that it needs no serious discussion and has efficiently moved on to the marginally closer question of isolated genomic DNA. While this may superficially seem like a nice, neat compromise, it quickly falls apart under scrutiny. In the area where the Myriad case has the most potential impact, because new isolated DNA patents are common and thus incentivizing new discoveries is most important today, there is no distinction between genomic DNA and cDNA. Bacteria, for example, have no introns, which means the reverse transcription product of mRNA (i.e., what you might call a cDNA) has a sequence identical to genomic DNA. In essence, there is no such thing as cDNA in bacteria. DOJ's position would make all isolated DNA claims patent-ineligible in any organism without introns. The wisdom of Solomon was not in splitting the baby, but in finding a course that meant he didn't need to.

3. Methods v. Compositions. Much of the Myriad oral argument centered on whether method of use claims would be enough to incentivize innovation in the life sciences. Some Justices seemed to be trying to weigh whether an entire category of composition claims could be invalidated without negative effect on innovation because method of use claims would remain. With respect, the Court is not the body that can or should attempt these kinds of determinations where in-depth investigation and careful balancing of competing interests is needed to strike the right balance between what is or is not needed for innovation. For example, the Court is not well-positioned to survey in detail the international legal landscape to, e.g., evaluate statements such as those from DOJ on DNA use versus composition patents in Europe. Congress, not the Court, is practically equipped and Constitutionally-tasked with precisely this type of determination.

4. Analogies. The Court seemed to grapple with several analogies in trying to probe the outer reaches of patent-eligibility. Any analogy that overly simplifies complex science falls apart under close scrutiny. But more importantly, the Court need not agonize over patenting livers cut out of bodies or whole plants uprooted from the Amazon. The patented molecules in Myriad are far closer and vastly more analogous to the chemical compound purified and concentrated from the Amazonian plant than the uprooted whole plant. Indeed, Myriad's claims present an even stronger case because there has been a modification of the chemical structure in addition to the purification. We must not confuse the analogy for the thing actually at issue or let hypothetical future implications of questionable likelihood cloud what was actually patented in this case. Concerns over allowing patenting of extracted livers should not distract the Court from the simple fact that what is before it in Myriad is neither an extracted liver nor an uprooted plant, but instead a highly useful, purified and chemically modified compound that never existed in nature until Myriad created it. If someone ever tries to patent an extracted liver, the Court can address any problems then. It would be tragic, however, to let the "tail" of that remote future possibility wag the "dog" of patent-eligibility for biotech inventions today.

5. Innovation. Some Justices appeared anxious incentivizing innovation without inhibiting it, with Justice Breyer noting "uncomfortable compromises" in patent law. The Myriad patents specifically and gene patents generally require no such discomfort. First, ACLU's argument that the claims preclude any study of the BRCA genes is simply wrong. Untargeted sequencing and analysis of the genes would not infringe claims to isolated BRCA DNA because it does not involve purification (thus no "isolation") of the BRCA genes out of the genomic milieu. Second, putting ACLU's anecdotes aside, all available systematic evidence shows that gene patents do not inhibit but instead spur innovation. ACLU's imaginative assertions about what the claimed molecules can be used for are a red herring; the Petitioners in Myriad clearly stated in their declarations that they want to use the claimed molecules not for DNA-based computers or developing new drugs, but instead to replicate Myriad's test.

6. Every Chemical Invention Is Possible in Nature. Justice Alito made an insightful comment about a branch washing up on shore looking like a baseball bat. This shows the legal irrelevance of the Lander amicus brief, which figured somewhat prominently in the oral argument. That randomly fragmented DNA floating around in someone's blood might at some point comprise the BRCA1 gene is irrelevant to the question whether what Myriad claimed was produced by human ingenuity rather than by nature. The relevant question is whether the inventor merely found something unmodified in nature and staked claim to it, or instead created something by her own ingenuity. To ask whether a claimed chemical composition could conceivably ever exist in nature is an unhelpful question of probability because, given enough time, any arrangement of atoms is inevitable. See, Dan L. Burk, Anticipating Patentable Subject Matter, 65 STAN. L. REV. ONLINE 109, 114 (2013). For example, it was irrelevant to the decision in Chakrabarty that Dr. Chakrabarty assisted the natural process bacterial "breeding" that, given enough time, could certainly have yielded the claimed bacterium naturally.

7. Subtraction v. Addition. Many easily accept that combining two chemical entities creates a man-made, patentable invention, but become instantly skeptical if a single molecule is separated into two parts that do not exist in nature. This surfaced in the Myriad argument as well, but from a chemical, biological, genetic, and even legal perspective there is no defensible distinction between addition and subtraction. A molecule created by removing parts that interfered with its new utility is just as much a product of human ingenuity, and can have just as important a new utility, as a molecule created by addition.

8. Short DNA Molecules. Justice Sotomayor asked about claims directed to short DNA molecules of 15 or more nucleotides. She appeared to rely on ACLU's arguments, based on an article published after Myriad filed its merits brief, about these claims covering the entire genome. Certainly as to Claim 6 of the '282 patent, this is clearly wrong. Claim 2 is directed to a molecule with the cDNA sequence of SEQ ID NO:1 (whose patent-eligibility the Court seemed pretty comfortable with) and Claim 6 is merely directed to fragments of that molecule. If the larger molecule is a product of human ingenuity, then human-made fragments of it must also be. Regardless, ACLU's unproven allegations on this point are irrelevant from a practical perspective. Anything as small as 15 nucleotides would only be used as part of a primer pair and, when used this way, the molecules would be 100% specific for BRCA1.

9. Myriad: A Unique Chance to Return Clarity and Fairness to Patent-Eligibility by Returning to the Statute and Chakrabarty. There is currently great confusion amongst courts, the patent office, patentees and the public about patent-eligibility under section 101 of the Patent Act. While the spirit behind the judicial exclusions for patentability is correct, decisions applying them can often be, in the words of Justice Frankfurter, "infected with too much ambiguity and equivocation" due to "vague and malleable terms" such as "the work of nature" and the "laws of nature." But the language of section 101 itself and the Court's seminal decision in Diamond v. Chakrabarty provide the Court with a framework for a long overdue recalibration and clarification of patent-eligibility in the Myriad case.

Section 101 requires that a claimed composition of matter be both new and useful, thus encompassing the judicial exclusions and giving courts the tools to resolve difficult questions of patent-eligibility. The claimed chemical composition must have some structural, physical or chemical change from the natural starting materials used by the inventor in order to be new under section 101. Limiting patent-eligibility to structurally, physically, or chemically "new" things addresses the judicial concern over patentees removing from the public domain that which exists in nature because there must be a modification of the natural thing. It further addresses the Mayo Court's concern over section 101 becoming a dead letter. Section 101 fills the gap in sections 102 and 103 by excluding anything the inventor found in nature but that was not previously known to others (which could not be anticipated or obvious under section 102 or 103, but which we don't want to award a patent for).

Merely being new is not enough under section 101; the claimed invention must also be useful. This is where the statute really does its work and gives courts an objective yet flexible framework for giving proper force to the legislature's intent. Not just any utility will do. The claimed composition must have one or more significant new utilities and these new utilities must directly result from the structural, physical or chemical changes made by the inventor. Courts can exert substantial discretion in determining whether the new utilities are "significant" under section 101. Courts can weigh the structural changes (how new the composition is) with the new utilities (how significant they are) to decide whether the invention is patent-eligible. If the utility is relatively minor, more of a structural change may be required. If the utility is groundbreaking, very minor structural changes may be sufficient. For example, purification of a molecule from its natural surroundings, without any change in the chemical structure, is a relatively minor structural/physical change from the natural state of things. Nevertheless, this may be patentable if the highly purified composition has significant new (e.g., therapeutic, diagnostic) uses. Importantly, these uses must be assessed from the perspective of human endeavors. The purified molecule always has some or all of the same chemical properties (e.g., polarity, electronegativity, etc.) as it did in nature, but its purification has opened up a world of human uses that take advantage of those properties.

The Court's decision in Chakrabarty, the definitive statement of patentable subject matter for compositions of matter, epitomizes the judicial exclusions and the statute working at their harmonious best. Chakrabarty cited to many of the early cases that established the judicial exclusions from patent-eligibility, then clarified that the dispositive question for patent-eligibility is whether what is claimed is a product of nature or a product of human ingenuity. The Court's analysis paralleled section 101's text, emphasizing that the claimed bacterium was different from what existed in nature (i.e., it was new) and had "significant utility" (i.e., it was useful).

In a great insight into what it means for something to be "new" under section 101, the Court made clear that it is the differences between what is claimed and what exists in nature, not the similarities, that make all the difference in patent-eligibility. Dr. Chakrabarty manipulated bacterial breeding to give one bacterium the natural ability of other bacteria to eat oil. As Dr. Chakrabarty himself noted in his amicus brief in support of Myriad, "the genetically-engineered bacterium that I created and sought to patent in Chakrabarty had a quite similar structure to what existed in nature. It shared the same genome and internal structure as naturally occurring Pseudomonas bacteria and differed only by a few pieces of DNA."

But these elegant changes resulted in "significant utility" such that the Court declared that these modest modifications yielded a product that was "markedly different." The vast similarities were irrelevant; they did not negate the fact Dr. Chakrabarty's human ingenuity brought about something that never existed before with "a distinctive name, character and use." As the Chakrabarty Court noted, legislative history makes clear that what is not eligible for patenting is that which is "created wholly by nature unassisted by man" while anything that "is unique, isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man" is eligible. The modified bacterium gained significant utility from the donor bacteria and could now be put to many important new uses (e.g., cleaning up oil spills). Again, a relatively minor structural change can be enough if the gained utility is significant.

In Myriad, the Court can readily apply this framework to find that the claimed compositions are new and useful and thus patent-eligible. The isolated DNA molecules are new because they are not found in nature by definition. As shown in point # 1 above, "isolation" under the patents requires a brand new chemical composition with significant structural changes that has been purified and concentrated out of the milieu that previously prevented its new uses. Chromosomal DNA in its natural environment, whether whole in the cell or fragmented in the blood, is neither new nor patent-eligible, while the molecule chemically modified and purified by man is both.

The new molecules have gained significant new utilities. They can be used as laboratory tools for targeted sequencing of the BRCA genes of patients, which is not just transfer of an existing utility to a new product as in Chakrabarty, but an entirely new utility never possible before. ACLU makes much of the fact that these utilities largely depend on properties shared with the natural DNA. This is true but irrelevant. The new molecules share some useful properties with the natural source material (why else would we have sought them out?), but the breakthrough new utilities were impossible before the inventors' modifications. This is precisely what the patent system was designed to incentivize.

Upholding the Myriad patents does a lot more than affirm patent protection of a deserving invention of human-made molecules with significant societal value. In Myriad the Court can honor the language and intent of the statute passed by Congress and bring the objectivity, clarity and predictability that patentees and alleged infringers alike yearn for, all while advancing the policy goals of the judicially-created patent-eligibility exclusions.

236 thoughts on “Guest Post: Nine Reasons why the Supreme Court Should Side with Myriad and Affirm the Patenting of Isolated Human Genes

  1. LOL

    MM: You are one of those people that are not held to account

    You mean that you wish to improve blogging quality by holding people to account?

    That’s just a Cr@zy idea.

    C’est la vie.

  2. Trollboy doubles down!!!

    I would venture that EVERY firm engages in the practice I described – to at least some degree.

    LOLOLOLOL!!!!!!!! Just name one. Maybe it’s one I’ve already spoken to and then we’ll have a “final answer” as to whether you are as dishonest and pig-ignorant as you appear to be.

  3. It’s just another vacuous trick: no matter what, claim victory.

    It’s funny though how few actual answers Malcolm comes up with in regards to actual issues – and how often he toasts his own agendas when he does venture into substantive discussions.

    Malcolm, what is the controlling law regarding exceptions to the printed matter doctrine?

    Malcolm, say you do have a patent on a Product of Nature, something that is from the warehouse of nature and free to use by all men – how do you distinguish that item if you try to enforce your patent?

    LOL

  4. That’s funny – you have been compared to Mr. Schroeder more – and more fittingly in the type of response.

    But that is no surprise that you (again) engage in the inane tactic of accuse-others-of-that-which-you-do.

    It appears that metaphors are not the only finite thing around here.

  5. What does “controlling law” say about the eligibility of a claim in the form [oldstep]+[newthought], anon?

    LOL – certainly not what you think with your crrppy theory Malcolm.

    I have pointed this out to you many times and the flaws that your ‘theory’ has.

    You never seem to want to address those points.

    But let’s let you self-defeat again and have you give the link to the OFFICIAL Office view of what the Prometheus case means – you know, the one supported by your nemesis, 101 Integration Expert…

    LOL – Again with the misrepresented mail example too. Don’t you just love when Malcolm proves my points so eagerly? Yet another counter point forever evaded by Malcolm: tell me Malcolm, do you use a spam filter on your email? Do you review every single piece of correspondence addressed to you? What does your insurance carrier have to say about that?

    I would venture that EVERY firm engages in the practice I described – to at least some degree. SHow me one that does not, and I will show you a firm that is not long to be practicing.

  6. I guess there’s just a finite number of metaphors available to the patent t–baggers.

    It’s because there’s no incentive to innovate around here. You completely missed NWPA’s brilliant point.

  7. MM: you mean that Stephan posted something on here. I made substantive objections to his post. He never responded to the substantive objections and instead made a number of logic fallacies, and then ran.

    Oh wait that is exactly what you do, so I guess you would see that as victory.

  8. It’s amazing that you are able to see such fine raiments upon yourself, as you stand there in your birthday suit, surrounding yourself with fawning tailors. Oh, how their praise of your views echoes in your ears.

    Andy Schroeder called. He wants to subscribe to your newsletter.

  9. I will hand your empty head back on a platter

    I guess there’s just a finite number of metaphors available to the patent t–baggers.

  10. The real blight comes from those who would voluntarily admit controlling law, and then turn around and blatantly lie about that very thing in order to advance an agenda.

    What does “controlling law” say about the eligibility of a claim in the form [oldstep]+[newthought], anon?

    Let’s watch and see if Trollboy can live by his own words. It’s a very simple question with a very simple answer. Has Trollboy grown up in the past week? We highly doubt it. But let’s find out.

    And then maybe Trollboy can tell us the name of a single firm which uses mailroom staff to screen registerered letters to attorneys, whereupon letters deemed to contain prior art relevant to an attorney’s client are discarded so the attorney can avoid learning about that art. Just one firm, anon. I mean, you brought it up and you’ve never admitted to everyone that you were just pulling sh-t out of your a–. So tell us the name of a single firm that engages in this practice which you extolled. Just one.

  11. when those who urge the patent system be done away with see themselves as forward thinkers, ahead of the wave.

    LOL – for someone who “loves patents,” you glom onto this “done away with” as ‘forward thinking’ way too easily.

    There is danger to be alive to alright. It is those patent attorneys who would eliminate the patent system, and then call it ‘forward thinking.’

    With friend like that, who needs enemies?

  12. It is pathetic! How lame that Stephan cares.

    I’m pretty sure he doesn’t care about your standardized test scores.

    I disagree with Stephen on a number of topics but I do credit him with total victory in his exchange with you, NWPA. But, hey, Trollboy is standing with you. That must be reassuring.

  13. Is it “confirmation bias” to look at the i4i case?

    Is it “confirmation bias” to see who lined up to push the AIA through?

    Is it “confirmation bias” to see who benefits most when the patent system is maligned – either on a large scale or on a gradual (peace in our day) scale?

    You would think that someone from Europe would be a bit more attentive to such tricks. But the lack of any real conversation, the lack of response to any real challenges posed to MaxDrie reveal what he is truly about.

  14. It is called the Confirmation Bias and it is extremely primitive and dangerous. We patent attorneys should be alive to that danger.

    LOL – “Alive to” in MaxDrei’s world apparently means to live that concept fully.

    It’s amazing that you are able to see such fine raiments upon yourself, as you stand there in your birthday suit, surrounding yourself with fawning tailors. Oh, how their praise of your views echoes in your ears.

  15. The thing is, NWPA and anon, I can see both sides of the Argument.

    No. You cannot. For if you did “see” accurately, you would see that the Kinsella rhetoric is a crock.

    As has been shown repeatedly, your ‘want’ is the want of a mere soap box to expound upon your chosen views. Nothing more. No ‘discussion’ and certainly no ‘challenge.’ You have proven that in word and deed.

    Even here, what you rally to is merely that which echoes what you believe:

      The worst enemies of the patent System are those who blindly assert that a patent System, per se, has no deleterious effects on the economy whatsoever. … Anonymous patent practitioners, blindly asserting their own self-interest, are a blight on this blog.

    Blight? Really? Your professed ‘cure’ is to have a sport of kings and flash of genius for what you consider to be that set of patents that are ‘worthwhile.’ You would kill the patient to cure the ills. And in that sense, while you ‘proclaim’ your love of patents, you really show your disdain.

    No thank you.

    Like anything else, patents have their good side and their bad side and we have to nurture the good and cabin the bad.

    You quite misunderstand what is going on, and I daresay that misunderstanding is on purpose. You once proclaimed a mantra of “I am here to learn” – that was shown to be quite false. You then had a (thankfully short-lived) mantra of “Let’s be nice so we can have a conversation” – that too was shown to be quite false. You arise here in defense of, to be as polite as truthfulness will allow, scum, and your subtle joining in on his views fools no one.

    The real blight are the ones who engage in sophistry (and worse) in order to peddle their agenda. Those who refuse to acknowledge valid points raised and march onwards regardless – not learning, unwilling to listen or converse, and falsely attempting to play the let’s learn and converse cards – with no intention of doing so.

    The real blight comes from those who would voluntarily admit controlling law, and then turn around and blatantly lie about that very thing in order to advance an agenda.

    The real blight comes from those who when faced with a challenge, decide they don’t like what is said, disappear and run away, and yet return with the very same crock of shtt the next time the topic comes up.

    No MaxDrie, I do not buy what you are trying to sell. Your spin in sync with Kinsella says more about you than you think. What you want to keep is a bastardized view of patents. Patents so gutted and having such a thin veneer that they are inconsequential and ‘don’t upset’ anyone.

  16. >You might have enjoyed living in Europe but i bet >you would not have enjoyed its Rule of Law, under >which it has difficulty distinguishing evidence from >mere attorney argument.

    Yes, MD, you are not only offensive and bizarre, but quite clever.

  17. So now you find that I too am “offensive and bizarre”. You will not be surprised if I tell you that doesn’t disturb me one iota. This is the fun thing about anonymous blogs: we just spin stuff out and see what reception it gets. It is not as if it is serious, like, what we write will deprive some accused person of life or liberty.

    You might have enjoyed living in Europe but i bet you would not have enjoyed its Rule of Law, under which it has difficulty distinguishing evidence from mere attorney argument.

  18. I know, I know, the world is awful and getting steadily worse isn’t it?

    You remind me of the eminent patent judge from England, addressing the German equivalent of the AIPLA Annual Meeting, about 15 years ago, in Ulm, on the subject of how to construe claims. As ever, speakers from England think they ought to start with a joke. So he said “In this area, as with many others, we can all learn a great deal from the Americans” Then he paused, to allow time for mutterings within the large audience. Then he added: “Observe closely what they do, and then make sure you don’t do the same”. That got the German audience on his side.

    I should add that Germans think they are cock of the walk when it comes to laying down patent law although (to the disgust of the British) they slavishly copy rubbish US Doctrine of Equivalent jurisprudence.

    This is why we have blogs like this one, to teach each other what not to do.

  19. I would say MD that there is something that is just offensive and bizarre about you. I made substantive objections to his paper regarding logic fallacies. He NEVER addressed them. One does not just move when basic objections to an argument have been made.

    It is like Lemly’s paper on copyright and software where he hides his premise that software has no structure. When this objection is raised, it MUST be addressed. One cannot simply move past a basic objection that is a premise of the conclusions.

    You see that is no accountability.

  20. And, by the way MD, I am not alone in saying this. What I just wrote I would say is a fair characterization of the intellectual left’s view of America right now.

    Bill Moyers had a series on this subject about 10 years ago and things have just gotten progressively worse.

  21. MD: I enjoy debates and I respect that reasonable people can disagree. But, in this debate what I see is intentional misrepresentations by the anti-patent crowd. I see no accountability and I see outrageously ignorant arguments being presented by people in positions of power.

    I do wish I had the time to fight this fight with studies and papers.

    I suspect that you are a decent fella that just doesn’t get that the U.S. has changed. Something happened to debate around 1980. There was no more accountability. People just say whatever they want and aren’t held accountable. I think that, for example, some of Lemley’s statements, if made back in the 1970’s would have resulted in him being removed from Stanford in disgrace.

    You know, MD, you need to take a good look at the “debate” and realize it isn’t a debate. It is a medieval slug fest.

    It is the zeitgeist in the U.S. Somehow or anther we moved to a system of no accountability, and no integrity.

    Lemly is a perfect example of success based on misrepresentation. Benson is another example.

    I know in Europe people still play nice. I liked living in Europe. It was a better life. Here in the U.S. we live in the mud.

  22. NWPA, thanks for those words. I was getting on fine till I got to your pathetic last para. Calling those holding an opinion different from yours ” a mob of torch welding ignorant medieval barbarians” might make you feel better but it does nothing to preserve a decent and balanced patent system, when those who think that patent rights have crept too far includes not only Stephan Kinsella but also influential people in SCOTUS, the executive and the White House, and when those who urge the patent system be done away with see themselves as forward thinkers, ahead of the wave.

    People (including you, I suspect) find what they want to find, in any particular item adduced in evidence. It is called the Confirmation Bias and it is extremely primitive and dangerous. We patent attorneys should be alive to that danger.

  23. I am not sure why the noise is full of anti-patent studies. I know that when I had to time to actually look at this that the opposite was true. The studies indicated that patents did promote innovation and the evidence was overwhelming. And, the actually studies that were performed by people with integrity showed that many software patents actually were quite innovative and did promote innovation. I remember a study on the features of Word. What really gets me red faced is these intellectually dishonest weasels that do not understand or do not wish to understand hindsight.

    The anti-patent horde is a mob of torch welding ignorant medieval barbarians.

  24. MD: give me a break. I am quite capable of stating my own positions. Never have I said there isn’t a trade off with patents. All in all, it would be better, of course, not to have patents if they didn’t promote innovation.

    As for Microsoft, Microsoft achieved its dominate role mainly through copying. In fact, almost entirely through copying. When patents started to force innovation, Microsoft went along and realized they would have to actual create innovate products and so they hired researchers to innovate.

  25. The thing is, NWPA and anon, I can see both sides of the Argument. On EPC “use” Claims for example, MM and I hold opposite views and debate them. Kinsella has had bad experience with patents so now wants to get rid of them. I have had good experience and want to keep them.

    The worst enemies of the patent System are those who blindly assert that a patent System, per se, has no deleterious effects on the economy whatsoever. Like anything else, patents have their good side and their bad side and we have to nurture the good and cabin the bad. As far as I can recall, Microsoft achieved its dominant position without any help from a patent Portfolio. The mere fact that today it has a Research Dept says nothing at all about whether patents are helpful to the economy or not. Anonymous patent practitioners, blindly asserting their own self-interest, are a blight on this blog.

  26. It is pathetic! How lame that Stephan cares. I wish he would just address my substantive arguments.

  27. Stephan, you came here with an argument against the patent system. I pointed out logical fallacies in your arguments. You have not addressed my substantive arguments.

    Sheesh!

    I think you know that I have been a real adjunct professor and that I am a patent attorney. And, I think you know that I outscored you on the standardized tests.

  28. You are the one wanting to change the game Kinsella. Why are you asking somebody else to prove anything?

    There is no need for anyone to post any argument FOR IP until you make a prima facie case AGAINST IP.

    You have failed to do so.

    But tell you what, you show me just a single solitary uno one modern advanced country that has bought into your claptrap and chucked IP and I might consider you to started to make a case.

    Other than that, all I see is your sophist w@nking.

  29. And I am still sure that I outscored you on standardized tests.

    LOL. That’s pretty pathetic, Night.

  30. NymWPA: “You have done everything possible to divert the conversation away from the merits. Go back and answer my questions regarding your logic fallacies. But, you are like all academics that get on this board. The game is to pretend to be on the high horse and then when you are losing start claiming that we are losers and illiterate.”

    I am waiting for a coherent argument in favor of IP. You have not presented one yet. This is telling.

    “Face it, Stephan, you are full of it. Your arguments are filled with logic fallacies.”

    Where is your argument for IP?

    “I’ve been an adjunct professor, an engineer, inventor, patent attorney, a businessperson, and many more things as well.”

    I seriously doubt you have ever been a real adjunct professor or patent attorney or businessperson. But no matter.

    “As for the poseur comment that is certainly unfair. You started with the appeal to authority—not me. I merely responded to let you know that not only is that a logic fallacy, but you aren’t anymore of an authority than I am.”

    I never claim to be right as an authority.

    “And I am still sure that I outscored you on standardized tests. So, you can pack away your IQ claims as well.”

    I highly doubt it. You are just some cowardly nobody nym, after all.

    “Why is it that your ilk are always such dirty fighters? The funny thing is that you think your vanity press publications have more weight than a blog post.”

    Oxford U. Press is a vanity press now? ho-kayyyy

    Do you have coherent argument for IP law?

  31. Kinsella is anything BUT sane, reasoned and intelligible. I will grant you that he is intelligent, but he is a sophist and if you actually follow what he says, you will see he is full of crp.

    The only thing “deeply troubling” you is that you cannot have your so@pbox here go unchallenged.

    When challenged, you go all to pieces and disappear.

    Every.
    Single.
    Time.

    You no more want to be ‘challenged’ than you want to have ‘actual conversations’ (which to say, is NOT).

  32. I for one am grateful for sane, reasoned, intelligent and intelligible contributions to these threads, that challenge my own assessments.

    “…that challenge my own…”

    You are a L1AR and a hypocrite.

    Your Crybaby Veto ploy has already been exposed MaxDrei.

    Your subtle “our deeply troubled residents” Is utter crp.

  33. I am “deeply troubled” due to the never ending specious arguments against the patent system. And, the inability of the academics that post on this board to engage in an intellectually honest debate.

    Stephan committed three logical fallacies in presenting his arguments and has resorted to an attack on the person rather than address the substance of my arguments.

    Really, MD, try to be an adult.

  34. I have followed with mounting amusement the interchanges between Kinsella and our deeply troubled residents NWPA and anon.

    And then came the mother of all self-delusional utterances from NWPA:

    “I have something that you will never have–integrity”

    which left me feeling sad.

    Don’t be put off Stephan. I for one am grateful for sane, reasoned, intelligent and intelligible contributions to these threads, that challenge my own assessments.

  35. And Stephan, I didn’t Google you. I don’t need to know who writes a paper to evaluate the paper on its merits.

    You see I have something that you will never have–integrity.

  36. Although Stephan, if you want to do a real research paper, I could design a study to be done that would support the proposition that patents promote innovation.

    But, I guess you wouldn’t want to spend the time to do that would you.

  37. Can anyone of “general intelligence and honesty” understand logic fallacies? You have used three so far.

    You have done everything possible to divert the conversation away from the merits. Go back and answer my questions regarding your logic fallacies. But, you are like all academics that get on this board. The game is to pretend to be on the high horse and then when you are losing start claiming that we are losers and illiterate.

    Face it, Stephan, you are full of it. Your arguments are filled with logic fallacies.

    I’ve been an adjunct professor, an engineer, inventor, patent attorney, a businessperson, and many more things as well. As for the poseur comment that is certainly unfair. You started with the appeal to authority—not me. I merely responded to let you know that not only is that a logic fallacy, but you aren’t anymore of an authority than I am. And I am still sure that I outscored you on standardized tests. So, you can pack away your IQ claims as well.

    Why is it that your ilk are always such dirty fighters? The funny thing is that you think your vanity press publications have more weight than a blog post.

    I am sure since you have lost this argument that I can count on you spitting in my eye to change the topic.

  38. OK Stephan. You can spell outscored and focus on spelling and simple grammar. You don’t care about logic fallacies.

  39. This is not an argument for the legitimacy of the patent system

    Really? OK, but it is the truth.

    I can live with that.

    If you can find an advanced society that buys into ANY of your claptrap, let’s see the empirical evidence.

    ALL else from you is sophist w@nking.

    And that too – is truth.

  40. anon: “NWPA may have his sky is falling moments, but you have your head up your @$$.”

    This is not an argument for the legitimacy of the patent system.

    “Your shtick is well known, and you have zero credibility.”

    This is not an argument for the legitimacy of the patent system. My argument is not based on my ‘credibility.” NWPA is the one who asked my credentials or my experience with patent attorneys, evidently not being perspicacious enough to do a quick google search to realize that I am already a very experienced one.

    “You throw around “burden of proof” – and wrongly so. You want to change to a no-IP system. The burden of proof is on you. I have read what you have offered as “proof” – it is not convincing. It’s flaws have been well documented.”

    Its. Not It’s. And what exactly are the “flaws”?

    “Here’s a simple exercise for you: perhaps you want to lead the pack of “nym/trolls” that post on occasion here in finding that one single example of a modern advanced society that has seen the light of your dogma and chucked their IP systems. Just one that has done as you desired – let’s see that empirical result. Just one.”

    You might as well ask me to find an example of a modern industrial economy that has no tariffs, drug laws, or tax system–and then credit these noxious policies with the prosperity.

  41. It’s a blog you dxmb@$$.

    Once again you mistake the currency of sophistry for intellectualism.

    You are a sophist – nothing more.

  42. Typos are one thing. I am on an ipad. Etc. Writing “out scored” is not a typo. It is an indication of stupidity. Like writing it’s for its, or they’re for their. These are not typos. They betray an essential illiteracy. The type that makes claims to being an intellectual, scholar, or even good patent attorney laughable.

  43. And secure enough to use my real name

    That’s not “security.”

    Check out the long and honored tradition of using pseudonyms, before ASSuming that the use is tied to “security” or any such tripe (and the implicit – and sophist – implication that not using your real name implies the post is somehow of less quality or import.

  44. NWPA:

    “Stephan, the smell of defeat is often the other side making an appeal to authority.”

    I made no appeal to authority.

    “You haven’t address my evidence. The fact is that the evidence is overwhelming that patents promote innovation. Why there aren’t more studies to this effect, I do not know. I know I could design a study to prove as much.”

    Woulda coulda shoulda. I did address your feeble attempt at “evidence”. It is not a fact at all that there is overwhelming evidence. Did you even look at the post I linked showing dozens of studies all leaning against patents?

    “Hmm…well, you seem to have conceded that patents do promote innovation but that they are against property rights. Maybe.”

    No, I have not. I do not think patent promote innovation. I think they are unjust and contrary to property rights. I also think they hinder, not promote, innovation. And even if patents could be shown to promote innovation in some narrow areas, the cost is not worth it.

    “What I see is people that “invent” something after having seen the invention and forgotten about it.”

    Sometimes. So what? there is nothing wrong with learning, with competition or emulation.

    ” I have also desperately tried to innovate and failed and then seen others succeed only to have many take their invention and claim that it was obvious or that they had invented it.”

    You cannot “take” someone’s invention. You can only copy it or emulate it or build on it. Dishonestly claiming you were the first one to come up with an innovation is just dishonesty and has nothing to do with patent or copyright. Patent and copyrihgt would prohibit people from using public information *even if* they were perfeclty honest about the source of the ideas employed. This is another dishonest red herring of IP advocates–to mix in claims of “plagiarism” which IP has nothing to do with.

    “The fact is that Microsoft research labs is not a study but evidence. It is very hard to show causation in these cases.”

    You don’t say.

    ” But, the number of Microsoft research labs and sales of Motorollas is enormous. I have also worked at innovation centers of corporations and know they wouldn’t be there but for patents.”

    Yes, lots of things would not exist but for state interference. So what?

    “I will also note that I have not seen a study or paper that patents do not promote innovation that does not contain inaccuracies that render the study invalid and often those inaccuracies appear to be intentional.”

    The things is: if you and your kind, who have claimed for a century or more that patents do promote innovation and implicitly cliam that the value of these innovations outweigh the costs of the system, cannot produce in 200+ years a systematic study demonstrating this claim, that you have failed to justify your case. The rest is just thrashing about in an attempt to deny this failure.

  45. but this is al irrelevant.

    Don’t you mean “all irrelevant”? – if you are going to stoop to slam someone for a nit like misspelling on a blog, make sure you aren’t doing the same thing.

    You remain an @$$ Kinsella.

  46. NWPA: “And, Stephan, sorry but I am intimidated by academic qualifications. I’ve gone to some of the best schools and I am sure probably out scored you in standardized tests, but I have focused on practical accomplishments and not academic papers.”

    It is highly doubtful someone dull enough to write “out scored” instead of “outscored” did better than me on … anything–but this is al irrelevant. As for practical accomplishments I was partner at a top 100 law firm, an adjunct law professor, and GC of a high tech company. And secure enough to use my real name. It is highly you are at best some mediocre poseur-loser, but– again, this is irrelevant. i do not rest my critique of IP on my credentials. In fact I think anyone of general intelligence and honesty can understand this.

  47. And, Stephan, sorry but I am intimidated by academic qualifications. I’ve gone to some of the best schools and I am sure probably out scored you in standardized tests, but I have focused on practical accomplishments and not academic papers.

  48. Stephan, the smell of defeat is often the other side making an appeal to authority. So, now we have you in three logical fallacies. If you cannot defend your arguments, then just throw up the white flag, which I think you already have.

    You haven’t address my evidence. The fact is that the evidence is overwhelming that patents promote innovation. Why there aren’t more studies to this effect, I do not know. I know I could design a study to prove as much.

    Hmm…well, you seem to have conceded that patents do promote innovation but that they are against property rights. Maybe. What I see is people that “invent” something after having seen the invention and forgotten about it. I have also desperately tried to innovate and failed and then seen others succeed only to have many take their invention and claim that it was obvious or that they had invented it.

    The fact is that Microsoft research labs is not a study but evidence. It is very hard to show causation in these cases. But, the number of Microsoft research labs and sales of Motorollas is enormous. I have also worked at innovation centers of corporations and know they wouldn’t be there but for patents.

    So, maybe if you are decent fellow, you will question some of your assumptions above innovation and patents.

    When I read the FCC chairman saying that the sale of Motorolla illustrates that patents are bad, we know there is a witch hunt underway.

    I will also note that I have not seen a study or paper that patents do not promote innovation that does not contain inaccuracies that render the study invalid and often those inaccuracies appear to be intentional.

  49. nym/troll…?

    Really, Kinsella?

    NWPA may have his sky is falling moments, but you have your head up your @$$.

    Your shtick is well known, and you have zero credibility. You mistake what is intellectual currency for what is sophistry. Sure, you are learned and can turn a phrase. But your h@tred of patents and copyrights – for whatever reason – blinds you to reason. You are on a witch hunt and nothing anyone can say will make a difference to you. You have made a career of running around with your fingers in your ears chanting your mantra.

    You throw around “burden of proof” – and wrongly so. You want to change to a no-IP system. The burden of proof is on you. I have read what you have offered as “proof” – it is not convincing. It’s flaws have been well documented.

    Here’s a simple exercise for you: perhaps you want to lead the pack of “nym/trolls” that post on occasion here in finding that one single example of a modern advanced society that has seen the light of your dogma and chucked their IP systems. Just one that has done as you desired – let’s see that empirical result. Just one.

    Wouldn’t that be something?

  50. “So, Stephan, you didn’t address my issues at all.”

    yes, I did–very directly.

    “Nice position you have there. Prove that patents promote innovation or they don’t. OK.”

    I am not an empiricist. I don’t agree this is the way to go about these normative issues. I prefer to be principled and promote property rights. It is clear that IP undermines property rights.

    But most people today think in an unprincipled, utilitarian fashion, including most IP advocates, who assert that a patent system leads to overall weatlh gains in the form of increased innovation that has a marginal value substantially greater than the costs of the system. Yet they do not attempt to prove this case, and in fact the studies that do exist indicate the opposite is the case.

    “I am a patent attorney and I just gave you two very strong pieces of evidence that patents promote innovation. Microsoft’s research labs and the sale of Motorolla. You ignored them.”

    That is not evidence — it’s just anecdotal, not quantified at all. Further, you have not attempted to show that the value of this alleged innovation is greater than the cost of the patent system.

    “We have no arguments? Yes, tell us of the countries without patents and how well they are doing.”

    Again, you evidently are totally unfamiliar with the commonplace observation that correlation does not imply causation.

    ” Basically, what you are doing is taking something that has been a core part of our system for hundreds of years and saying that you don’t believe it works.”

    Actually, I say that it unjust, not that it “doesn’t work.” It is you unprincipled, “pragmatic” types who say that it “works” without proving that it does, even by your own flawed utilitarian standards.

    ” The onus is on you.”

    It is not, but I have met it anyway, in spades.

    “Innovation has worked in this country for hundreds of years.”

    Yes, despite the patent system.

    “You are typical of your ilk. I write papers in law journals so I know what I am talking about.”

    I have never heard of a law review that published a paper by a nym called “NWPA”.

    ” What review does you law journal article get? Citation checks where a student checks to see if the citation is remotely related to what it is supposed to be a citation to. What a joke. The part of system that is broken is accountability for people like you.”

    Have you even done a simple google search to see who you are dealing with, son? http://www.kinsellalaw.com and http://www.stephankinsella.com. check the publications page. Not that this is some credentials battle. You guys flounder around using whatever little argument you have at hand, switching from one to the other, because you have no real argument to defend the fascist system of patent that you for some reason feel like pretending to support.

  51. So, Stephan, you didn’t address my issues at all.

    Nice position you have there. Prove that patents promote innovation or they don’t. OK. I am a patent attorney and I just gave you two very strong pieces of evidence that patents promote innovation. Microsoft’s research labs and the sale of Motorolla. You ignored them.

    We have no arguments? Yes, tell us of the countries without patents and how well they are doing. Basically, what you are doing is taking something that has been a core part of our system for hundreds of years and saying that you don’t believe it works. The onus is on you. Innovation has worked in this country for hundreds of years. We have been the leader of the world in innovation. You want to pick a piece of it and remove it unless it is proved to your satisfaction that it is worthwhile.

    You know, you have no logical skills whatsoever.

    You are typical of your ilk. I write papers in law journals so I know what I am talking about. What review does you law journal article get? Citation checks where a student checks to see if the citation is remotely related to what it is supposed to be a citation to. What a joke. The part of system that is broken is accountability for people like you.

  52. Bizarre set of comments by “NWPA,” whoever this nym/troll is.

    “So, the lack of evidence (according to your unprofessional and sanctionable tripe) equates to patents being a net drag? OK. So, you put a clear logical fallacy as the basis of your paper. So, your credibility is total gone.”

    I am not a utilitarian or empiricist. But those who argue for patents based on utilitarian reasons have the burden of proving their case. they have not and apparently cannot. See my article There’s No Such Thing as a Free Patent link to mises.org. It is not my fault that the empirical studies of the type favored by IP proponents do not prove what they say it does.

    “Please disclose your sources of income so we can determine whether or not you are being paid for your comments. You probably are given your brazen logical fallacy.”

    I am a practicing patent lawyer. I’ve made a lot of money off of the system. If I had my way, and the patent system was abolished, I would personally be worse off. I am totally opposed to patent and copyright. They are antithetical to private property rights and free markets.

    “There is plenty of evidence that patents help innovation.”

    No, there is not.

    “Why did Microsoft build a research facility? Why was Motorolla bought and not put into bankruptcy? Etc… ”

    Questions are not arguments. And even if you show a particular firm benefits from patents that does not show that it promotes innovation or that it is worth the cost.

    “The fact is there is overwhelming evidence that patents promote innovation.”

    Where is the evidence? Can you point me to a single clear, incontrovertible empirical study that shows this?

    “And, if you ask patent attorneys (what patent attorneys have you asked? I will straight up say that you are a liar) they will give you lots of evidence.”

    I am a patent attorney. I talk to fellow patent lawyers often. I have never heard one even attempt to show that there is evidence that patents promote innovation. At most you hear them repeat trite bromides they heard someone repeat in law school, nonsense like “the US is prosperous and has always had a patent system–therefore patents are the cause of our prosperity.” Correlation is not causation, helloooo

    “Additionally, what do you know about innovation? Please tell us what experience you have in innovation. We know that you don’t understand logic, or have no morals, or more likely both.”

    Just a patentee and patent attorney for 20 years.

    “And, let’s remember putz brain, that your “paper” has no more credibility than a blog post. It has gone through no peer review and apparently from what we have seen of Lemley there is no consequence to intentionally misrepresenting facts in a law journal article.”

    I have authored many peer reviewed papers and my papers are not self-published. I have no idea what you are talking about. I’ve been published in academic law reviews, economics journals, mainstream presses like Oxford and West.

    “Vanity press is the best description of what you “paper” is and we all know the best use for your “paper” is in the water closet.”

    You see, this is why people like you are losing the IP argument–you have no arguments whatsoever. Pathetic, scrambling “arguments” like this display to the world that you are intellectually bankrupt.

    “And, boy, I doubt you have the integrity to take on me on this blog. I will hand your empty head back on a platter like have every other academic that comes on here. You will suddenly realize that facts matter and you can’t hide behind your vanity press and cadre of buddies in wealth gathering, i.e. the intellectual prostitutes of our time.”

    lolwhut

    “What a joke you are. Lies, logical fallacies, vanity press, etc. You should be pillared along with Lemley and Richard Stern. Tell us, boy, is a math equation a natural law? Boy.”

    lolwhut? what a joke nyms can be.

  53. And, boy, I doubt you have the integrity to take on me on this blog. I will hand your empty head back on a platter like have every other academic that comes on here. You will suddenly realize that facts matter and you can’t hide behind your vanity press and cadre of buddies in wealth gathering, i.e. the intellectual prostitutes of our time.

    What a joke you are. Lies, logical fallacies, vanity press, etc. You should be pillared along with Lemley and Richard Stern. Tell us, boy, is a math equation a natural law? Boy.

  54. And, let’s remember putz brain, that your “paper” has no more credibility than a blog post. It has gone through no peer review and apparently from what we have seen of Lemley there is no consequence to intentionally misrepresenting facts in a law journal article.

    Vanity press is the best description of what you “paper” is and we all know the best use for your “paper” is in the water closet.

  55. So, the lack of evidence (according to your unprofessional and sanctionable tripe) equates to patents being a net drag? OK. So, you put a clear logical fallacy as the basis of your paper. So, your credibility is total gone.

    Please disclose your sources of income so we can determine whether or not you are being paid for your comments. You probably are given your brazen logical fallacy.

    There is plenty of evidence that patents help innovation. Why did Microsoft build a research facility? Why was Motorolla bought and not put into bankruptcy? Etc… The fact is there is overwhelming evidence that patents promote innovation. And, if you ask patent attorneys (what patent attorneys have you asked? I will straight up say that you are a liar) they will give you lots of evidence.

    Additionally, what do you know about innovation? Please tell us what experience you have in innovation. We know that you don’t understand logic, or have no morals, or more likely both.

  56. anon, good post and I largely agree with it.  I think they determined, long ago, that laws of nature and natural phenomenon cannot be made by man and from this they are not eligible.   But with the ‘52 act and its definition of “invention” in 103, the are careful to identify their authority.  They have identified 101 or its  predecessors.   Products of nature might well fall into this category, but we an the geniuses we are have now found the ability to artificially make living plants and animals, these are now the subject of patents — but not the discovered in nature variety.
     
    Principles in the abstract and mental processes are also not machines, processes, manufactures or compositions.  They may be new and useful,  but they cannot be made by man.  That is why they must be reduced to a useful application.
     
    I hope we now agree on the basic principlse involved here.
     
     
     

  57. Ned,

    Something else for you to think about (and for you to understand why the highest Court in the land so carefully ties its authority to the implicit words of 101.

    Congress initially ‘punted’ on its authority to define ‘invention’ and allowed the judiciary to use the common law approach. What the Supreme Court should have done was rule that that law was unconstitutional for violating the separation of powers doctrine – as patent law is one particular area of law with a clear constitutional designation of authority for whom to write law.

    Instead, the Court became drunk with its power.

    You glibly say that 101 was not changed in 1952, while not recognizing the larger picture of what was changed. “Invention” and explicitly the judiciary common law authority to define invention was revoked.

    And it was a very deliberate action to use “obviousness” INSTEAD of “invention.”

    And yet, the Court found it could not remove its fingers from the patent pie. This is expressly why in every 101 case after 1952 the Court has been ultra careful in the words it uses to establish its authority. Go back and review those very careful words – which are usually accompanied by the (self)admonition that the Court cannot write law that Congress did not write.

    This is why it is critical to recognize that in the Prometheus case, the Court is NOT referring to dead letters of 101 (like several have incorrectly stated – and that I have corrected), but rather, the Court was referring to ITS exceptions as not being made dead letters. It is these very exceptions that the Court has firmly wed – not in 102, 103 or 112 [no matter how much ‘sense’ it may make to anyone, verily to everyone] – but to 101. This too should be abundantly clear from the 9-0 Prometheus decision.

    The Court itself has divorced the exceptions from any sense of “prior-ness” of 102/103. The Court itself has set the judicial exceptions apart. This is why the Product of Nature exception CANNOT be place where you keep on trying to place it – as you attempt to do, so must your effort be met with failure.

    You need to read the entire series of post-1952 cases again with this concept in mind.

    I “get” the rational you want to use. Unfortunately for you, the Court has made it crystal clear that such attempts to put their exceptions into any sense of 102/103/112 will not be tolerated.

    So instead of condescendingly calling me “kid,” you should recognize that I am your better in this area of law and you should accord me a bit more respect, or at least do as I ask of you and please stop your pedantic games of trying to rephrase my position into something it clearly is not.

  58. Ned,

    I concede exactly what I have stated. I concede that the Supreme Court has very carefully and very expressly chosen their words and that you are not at liberty to change those words to fit your agenda.

    Sorry – but that is the state of actual US patent law. If you want something else, you need to acknowledge that.

    Why must you play these pedantic games and attempt to twist what I have said?

    Where is your “yes” or “no” answer?

    And yes, I have noticed that you still have not meant my other challenges to you on this thread.

    Once again, we will have a conversation cut short by you and (no doubt) you will – once again – try to raise the very same position at a later date without taking into account the points that I have raised.

    Don’t you get tired of doing that?

  59. anon, you then concede that the exceptions are far older than 101, and that 101 itself is simply are reenactment of a basic statute that goes back to the foundation and that Congress did not authorize or define the judicial exception "beginning" in 1952 as you stated?

  60. And to take a small sidetrack, did all the scientists contributing to the aether suddenly “not make” those laws of nature after Michelson and Morley conducted their famous experiments?

    Did they?

    The map is not the world. Man’s creation of models describing how we view the world is not the world.

  61. Ned,

    My premise is clear: the Supreme Court grounds their judicial exceptions in the implicit words of Congress in 35 USC 101.

    That is the law – and is especially and explicitly what the Supreme Court themselves have said.

    Once again, this is not up for debate.

    If you do not accept this, then you are not talking about US patent law.

    Period.

    Do you accept this premise? (hint: this is a simple question that demands a simple yes or no answer)

  62. anon, your premise is that prior to 52, the exceptions were created as a matter of the Supreme Court's interpretation of "invention." But, I think it is clear that the Supreme Court did not believe that one can patent laws of nature because such were not machines, processes, manufacturers, or compositions of man. They were looking at the basic statute that existed in the law from the very beginning. They also took into the consideration, e.g.,  in Morse , the requirement in the statutes for a specification and of its requirement that the inventor describe how to make and use the invention. How can one describe how to make a law of nature, as such was not invented by man.
    There is simply nothing new in the 52 act in this regard. Congress did not create anything new in 1952 regarding patentable subject matter. Nothing at all.

     
     

  63. Sorry, “kid,” but I am not “way out” there.

    It is well known that the 1952 act reigned in the ability of the Courts to define “invention.” See the writings by your own hero Frederico on this matter.

    Since that act the Supreme Court has very delicately and precisely outlined where the authority comes from for their judicial exceptions.

    Quite clearly it is not a matter of 101 being new (nice red herring there). It is a matter of where the Supreme Court Justices could put their fingers into the patent pie.

    EVERY 101 Supreme Court case 1952 dances this fine line and EVERY single case says the exceptions are ground in the Authority of Congress in the implicit words of 101.

    This is NOT up for debate.

    You can choose to not accept this – that is within your ability. However, you must realize that when you do so, you have gone off the reservation, and onto one of your non-law frolics.

    I will remind you again of your duty to acknowledge controlling law.

    If you want to have a discussion about alternative universes where the law is different, please indicate so. If you want to have discussions about US law in this universe, then you must understand what that law actually is.

  64. anon, the ‘52 ACT???????  Authorized by Congress?  Are you serious?  Are you f’ing serious?
     
    Take a look at Benson, just for example.  They cite their own cases going back to Le Roy v.  Tatham and O'Reilly v. Morse for authority on the exceptions. 
     
    And for that matter, 101 is not new.  That statute has been in the statutory framework since the very beginning,  in virtually the same words.  Everything else is been added, but not that.
     
    And as I have repeatedly pointed out, time and again, O'Reilly  v. Morse penned its authority on what we now know to be section 112 paragraph 1.
     
    You are way out there kid.
     
     
     

  65. “There is currently great confusion amongst courts, the patent office, patentees and the public about patent-eligibility under section 101 of the Patent Act”.

    Some people say that the exclusions of patentability are “judicial”. Some say these exclusions are vague. They are neither.

    –Exclusions of patentability are statutory, if one were to actually read the statute as a whole and draw the logical conclusions.

    –These exclusions are implicit in Section 100(b), which lists the five categories.

    –Yes, you read that correctly: five (5) categories. Section 100(b) lists machine, manufacture, composition of matter, process and material. Only four of these categories are patentable, as we all know from section 101.

    –”Materials” are not patentable, by Statutory Construction. That which is not named in Section 101 (but which is named in Section 100(b)), is not patentable. It is thus apparent that “Materials” (whatever they may be…) are statutorily excluded from patentability.

    – Justice Scalia should use the principles of Statutory Construction and find that cDNA of natural genes are merely raw Materials, which are excluded from patentability.

  66. Sorry Ned, but no – I did not miss the context – you missed the larger picture and are attempting to take a crabbed view – one of your inabilities of reading case law – and one of the things that make me have to correct you on case law repeatedly (cases like Alappat, for example). Your problem is that you read in order to find a view you want instead of reading for what was actually being said. Thus you over read and under read at the same time.

    It is this tendency that gets you in trouble with Supreme Court case law as well.

  67. anon, you miss the context of Bergy. The examiner relied on Mancy for the cited dicta, which they took to hold that there was a 101 product of nature exception. Rich simply clarified that the statutory basis of those prior opinions was not 101, but 102 – prior art. He ended up reversing the Board, and said, in essence, the claims should have been examined under 102/103.

    The CCPA held that there was no product of nature exception. It further held that whether the claimed compositions were alive was legally irrelevant.

    I also am aware that Chakrabarty resulted from Bergy. Indeed, the SC copied most of its opinion from Rich’s excellent opinion. What didn’t happen is that they did not hold that the so-called Product of Nature exception really was an example of prior art and not a 101 problem. Why it did address Rich’s holding is a wonder.

    The Baldwin dissent in Bergy is interesting in that it did get the reason for remand from Flook: whether the claims at issue wholly preempted a Law or Phenomena of Nature. You will recall that the remand in Myriad was for this same purpose, but the Feds never really addressed that issue at all, even though it appears to be the real reason for Sweet’s holding.

  68. So now, you are being a rebel and insisting that the Supreme Court is wrong.

    Funny how that happens when your viewpoint does not match up Ned.

    You are all gung-ho for the SC words (even the dicta of Benson – while leaving out critical quotes) and the misapplication in Bilski – again, while leaving out the meaning that Stevens LOST), and yet, when a different dogma of yours is confronted, well, the SC must be wrong.

    How very odd.

    And I would also point out that mental steps are embraced within the meaning of process – just not claims composed completely of mental steps.

    And I would add one more glorious word about ‘mental step’ when it comes to claims for which that ‘theory’ is often attempted to be used:

    ANTHROPOMORPHICATION

    Ned, why is it that you STILL have not addressed this concept?

  69. misunderstand Diehr. Remember that, anon?

    LOL – actually No. I do not misunderstand Diehr. Not at all.

    Is that like you predicting in Bilski that the Diehrbots would be crushed?

    You disappeared for how many months after that decision?

    LOL

    And you too need to gao bakc and re-read that 9-0 dance a jig baby Prometheus decision to see the distinguishing between 101 and 102.

    Put plainly, the Product of Nature exception is not a 102 doctrine. The exception to patent eligibility is distinct from patentability. Funny then, that you danced you rway over to my view on the last Myriad thread here at Patently-O

    You seem to have trouble not backsliding with this, not withstanding your self-defeating dancing to the Prometheus tune.

  70. I would like you to actually (honestly) address the points onthis board that are made in good faith and for you to stop being a complete @_$$ about pushing your agenda.

    And as I previously told 6, the main thrust of this case will be based on the Product of Nature exception.

    The court fully may venture into a slight dictum on utility – angels do dance on the heads of pins. But clearly, your emphasis, when compared to my emphasis, shows which of us is the master on this topic (hint: it’s not you).

    Do me a favor and find me your quote from the last Myriad post where you finally came full circle and admitted a view that I tried from the onset to impress upon you. That was so yummy!

  71. Anon, do you really believe, really, that someone should get a patent on an obvious variation of another’s invention without their consent or the consent of their common owner?

    Do I believe that, or do I believe that Congress has written the law to allow that?

    Which question are you really asking Ned?

    I think it telling from your last comment that you do see that the law has changed. I just wish that you realized that this is NOT a constitutional question. From your own hypothetical, Joe is not falsely being given a patent on Y. Joe is being given a patent on Y’. Without Joe’s quo of sharing this, the progress would have not been promoted (in your hypo, there is no indication that Suzy did or planned to share this with the public). So once again Ned – please tell me your problem with the situation. Has not progress been promoted? Has not an inventor been granted a patent on his work, and not the item of another?

    Congress was quite clear that they wanted a policy of “what’s new to you is new” (the you being the royal Public you). The Court has made it manifestly clear that such policy consideratins are FULLY the domain of Congress.

    I see that you have made no case, not even a start of one to compel me to think otherwise. Believe me, I am willing to be quite flexible here, but you have to actually make a valid point – and indignation just is not a valid point.

  72. Dear Mr. Jackson:

    You imply that deciding in favor of Myriad would bring clarity to 101. Well, regarding processes, the Supreme Court has only ruled on one case that has affirmed what “is” 101 statutory, subject matter. And that case is Diehr. We know from the Court in Prometheus that the reason Diehr’s claims were statutory was because they were “integrated”. And as our good friend on this blog, anon, points out the MoT was not required or sufficient. Which leaves us solely to the issue of “integration”. Yet you argue that Myriad claims are defined in terms of “isolation”. Which on the surface at least, seems to be non analogous to the Supreme Courts use of “Integration”, especially given its ordinary, contemporary, common meaning. So can you tell us please, how you reconcile your definition of “isolation” with “integration, and how this helps your case for Myriads claims?

  73. Wrong Ned – look at the 101 cases post 1952. They trace their authority to an implicit reading of the words OF CONGRESS in 101.

    Ned – you are duty bound to recognize controlling law.

  74. Ned,

    You are misapplying case law (again).

    You need to do a better job of just finding a case that uses the words and then thinking that the case applies to your position. The method was being evaluated for obviousness in Kuehl. The point about “<>I>we were not discussing” and NOT EXPRESSING ANY VIEW in Bergy should be a little indicator to you. Sorry Ned – this does not support your view.

    Further, I do hope you realize that in re Bergy was subsumed into the case that you flatly refuse to acknowledge: Chakrabarty.

    My snippet trumps you big time. You have to do better.

  75. there is no “utility issue” for the Supreme Court in the Myriad case, as you fully know (or should know).

    Would you like to bet on that, Humpty?

  76. your ability to misunderstand case law

    Right, like your ability to misunderstand Diehr. Remember that, anon? Remember how Diehr was supposed to prevent consideration of the relationship of claim elments to the prior art? How’d your “understanding” turn out, anon? Answer: very poorly indeed.

    Stop trying to introduce 102 into the picture.

    Ned is pointing out that the case law which allegedly created the “product of nature” doctrine you hold so dearly is, in fact, a pile of g–rbage that is indistinguishable from a 102 analysis.

    This is why you are unable to provide us with a single example, given over a century of examples to choose from, in which a granted claim was deemed ineligible years after the filing of that claim when someone discovered the claimed composition “in nature.”

    But please keep shining that referee whistle, anon. It’s your trademark. We’d all shed a tiny tear if you ever stopped, um, “blowing it.”

  77. anon, Rich said the reason the product of nature was not patentable was based on prior art — not novel — not because it was excluded under 101.

    Application of Bergy, 596 F. 2d 952 – Court of Customs and Patent Appeals 1979

    "All that this court's Mancy case has been cited for is a bit of dictum bearing on a hypothetical situation which was not before us. The case involved claims to a process of producing a particular known antibiotic by aerobically cultivating a particular strain of Streptomyces bifurcus. The claims were rejected for obviousness under 35 U.S.C. § 103 on references showing various strains of other Streptomyces species used for the same purpose. We reversed, holding that In re Kuehl, 475 F.2d 658, 177 USPQ 250 (Cust. & Pat.App.1973), was controlling and that the new Streptomyces bifurcus strain discovered by Mancy himself as part of the invention being claimed could not be used as prior art in determining the obviousness under § 103 of his claims to a process of using it to produce the old antibiotic. In comparing the facts of the case before us in Mancy with the facts of Kuehl, we said (499 F.2d at 1294, 182 USPQ at 306):

      We recognize the differences between this case and the situation in Kuehl, where the novel zeolite used as a catalyst in the claimed hydrocarbon cracking processes was itself the subject of allowed claims in the application. Here appellants not only have no allowed claim to the novel strain of Streptomyces used in their process but would, we presume (without deciding), be unable to obtain such a claim because the strain, while new in the sense that it is not shown by any art of record, is, as we understand it, a "product of nature." However, it is not required for unobviousness of the method-of-use claims that the new starting material be patentable * * *.

    If it is not clear from the context that we were not discussing what is or is not statutory subject matter within § 101 but only a difference between two cases which we found not to be a reason for distinguishing them, and that we were not expressing any view, even by way of dictum, on the patentability of living organisms as such, we now make it explicit that the thought underlying our presumption that Mancy could not have obtained a claim to the strain of microorganism he had described was simply that it lacked novelty. We were thinking of something preexisting and merely plucked from the earth and claimed as such, a far cry from a biologically pure culture produced by great labor in a laboratory and so claimed. The dissenting board member was entirely correct in so interpreting our Mancy dictum. The examiner relied on it only to support his product-of-nature reasoning, and the board majority did not mention it, having abandoned that reasoning. Furthermore, it now appears to us, in light of what we have learned in this case about the separation and identification of new strains of Streptomyces, that our dictum was ill-considered. Had we known what we now know, we would likely have abjured the stated presumption."

  78. anon, they trace their authority to Wyeth v. Stone, Le Roy v. Tatham and O'Reilly v. Morse. The latter case rested its holding on what we now know as 112, p. 1. or (a).

  79. Anon, do you really believe, really, that someone should get a patent on an obvious variation of another's invention without their consent or the consent of their common owner? If there were a common owner, the patents would have to have a terminal disclaimer or be invalid. That is how the courts protect the public. But without a common owner, the patent on a obvious variation should be invalid.

    But you see no harm?

    And, more than this, you think congress intended this?

    I think congress was given a bill of goods which they rubber-stamped without understanding what they were doing.

  80. So you are now changing your hypothetical…?

    Are you asking why we bother with an oath/declaration? Or are you (again) ignoring what I have alrady posted (and what your hero Frederico has commented upon)?

    What point are you trying to make?

  81. …and the ball is still in your court for a citation to run counter to the example in Chakrabarty.

    C’mon Ned – give me SOME legal citation to support your view.

  82. Ned,

    What are the Judicial Excpetions?
    Where does the Supreme Court trace the authority to for those exceptions?

    And yes, we really do know what that is. Try being reasonable.

  83. anon, no supreme court case has ever held a patent invalid on a "phenomena of nature" basis. We really do not know what that is, now do we?

  84. anon, I think that congress does not have the power to grant patents to non inventors. I think the founding fathers thought this way too, because they believed that the constitution did not authorize them to grant patents of importation to non inventors even though the inventions themselves might be patentable under US law.

  85. Anon, the original cases from Wyeth v. Stone and on were not based on what we now know as 101, but on the scope of the claims, i.e., claiming a machine, product, composition or process functionally. Additionally, Laws of Nature tend to sound in prior art. If one discovers such a Law, one cannot claim it in the abstract, but one can claim a useful application.

    But when we say this, what are we saying, essentially. The scope of the claim far in excess the scope of enablement as patents are for particular applications of principle, and the specification cannot possibly have enabled them all.

    Mental steps, on the there hand, just might be a real 101 cases, as mental processes are not embraces within the meaning of "process."

    So, the Supreme Court insistence on using 101 for handling 112 issues is a mistake.

  86. Ned,

    Your pedantic spin grows tiresome.

    It is not a Product of Nature test.

    The Product of Nature exclusion is part and parcel of the phenomena of nature exclusion. This is a 101 doctrine. Thus, your (repeated) attempts to introduce some notion of “prior” – as in prior art – as in 102 – is rebuffed (again).

    Have you bothered to review the Prometheus case as I have asked you to do?

    I note above that you retread the same line about ignoring Chakrabarty because you consider teh example to be dicta. You quite miss the point tha tthe ball you were supposed to pick up was to provide some (any) legal citation that supports the opposite view, that you feel outweighs what the Supreme Court has actually said. You keep on dodging what I have asked you to do.

    It does not go unnoticed. Until you can comply, your reputation keeps getting dragged through the mud.

    Address the point raised.

    Please.

    Thanks.

  87. The repeal of 102(f) is constitutionally significant.

    You keep saying this, and yet, you have made no case for it.

    You will have to forgive me if I simply do not take your word for it.

  88. ” a claim to an oligonucleotide at least 15 nucleotides long comprising a sequence found in the BRCA1 gene, or a claim to 100,000 nucleotide molecule that includes the entire BRCA1 gene and more?”

    I’m unfortunately unable to answer the question as I do not understand that which is being discussed. Nor am I going to spend the time to educate myself to the point where I can answer it. But thanks for the comment.

    I will however have to disagree with you that preemption was not a concern at the arguments, it did come up, though I felt like it would have been nicer if they’d have really hit Myriad’s guy on it a bit harder.

    Indeed, preemption was what half the arguments were about, though under slightly different wording, the principle that was at issue is the same thing as preemption.

  89. If it comes in the statutes, where does it come from? Section 101 lays out the categories of statutory subject matter, but that is inclusive not exclusive. There are no exclusions and 101.

    Ned, if this is what you truly believe, then please explain what the Supreme Court means in every modern 101 case wherein they explain the basis of their judicial exceptions.

    Because either you or the Court is absolutely and completely clueless on this very fumdamental position.

  90. Malcolm, good points here. The real problem appears that the ACLU and the Government want to apply a Prod. of Nature “Test” where such a requirement has never been imposed by the Supreme Court in the first place.

    The PTO cases stem back to Cochrane v. Badische Anilin & Soda Fabrik, 111 US 293 – Supreme Court 1884 for authority, but that case clearly was about prior art, and not about some undimensioned product of nature exclusion. The PTO, the ACLU and the Government have no authority for such an exception.

    102(f) is another matter. But that has been repealed and its repeal should be considered by the Court.

  91. Anon, assume for the moment that one is claiming something that one did not invent. If we can prove that up in court and have the patent held unenforceable, then why in the world did we repeal 102(f) if the requirement remains in substance?

  92. IANAE, assume for the moment that one is claiming something that one did not invent. If we can prove that up in court and have the patent held unenforceable, then why in the world did we repeal 102(f) if the requirement remains in substance?

  93. Sometimes it’s all in the name.

  94. anon, Pennock would give a patent to a second inventor. There is nothing in Golan to suggest that congress has to power to grant patents to non inventors — other than assignees of inventors.

    This really is a basic, fundamental constitutional issue. The repeal of 102(f) is constitutionally significant.

  95. Can any of the believers in a so-called “product of nature” test explain the apparent willingness of the Supreme Court (and the ACLU) to grant claims to isolated oligonucleotides with sequences of nucleic acids that are identical to sequences found in the chromosomes of humans (not to mention the chromosomes of a myriad other organisms)? I’m curious as to how the “test” reaches that result and whether the test necessarily excludes protein-encoding polynucleic acids that are longer than the typical length of a probe for diagnostic/marking purposes.

  96. their (isolated) claims are going down as preempting uses of the discovery of the loci.

    Pre-emption of uses of discovery of the loci? Hmmm. I don’t recall that issue being of much concern to the Court in the oral arguments.

    Tell me, 6: which is more “pre-emptive”, a claim to an oligonucleotide at least 15 nucleotides long comprising a sequence found in the BRCA1 gene, or a claim to 100,000 nucleotide molecule that includes the entire BRCA1 gene and more? Everyone on the Court seemed comfortable with the idea that the isolated oligo was eligible. There’s is no coherent “pre-emption” test I’m aware that would lead to such a result. Care to explain?

  97. anon, the problem with Chakrabarty is that any discussion of a product of nature exception is dicta.
     
    I just want you tell me if you could where does product of nature exception comes from?  Either comes in the statutes art it comes in the Constitution.  They could be no other sources.
     
    If it comes in the statutes, where does it come from?  Section 101 lays out the categories of statutory subject matter, but that is inclusive not exclusive.  There are no exclusions and 101.  There are exclusions are requirements elsewhere though.  They exist in 102/103/112.
     
    As judge rich once pointed out, prior art is defined in 102.  There is no separate prior art requirement in 101 that is independent and distinct from 102.
     
    Section 103 defines what is inventive over the prior art.  It doesn't define who an inventor is just what an invention is, or at least the statutory framework for such a discussion.
     
    Section 112 paragraph 1 sets out the requirements for specification.  It must be enabling and must describe the invention.
     
    Section 112 paragraph 2 sets out the requirements are claims.  They must be clear and and particular point out the invention.
     
    Somewhere among these statutory exclusions do we find a product of nature exception except in 102?   The reason that we cannot patent things found in nature is because we found them, they are not new.  They are old.
     
      But this is why I find it so bizarre that the powers that be repealed section 102(f) that to me is a fundamental requirement of any patent law,  and is in my humble opinion a constitutional requirement.   If a person is not an inventor, there is no constitutional authority to grant him a patent even if he applies one and even if what he applies for is an invention.

     
      Thus I would agree with you that there is a product of nature exception, and it is 102(f), now repealed.
     

  98. So Dave-the-mutagenisis-expert, do you think you could have isolated the BRACA gene in 1989 without undue experimentation?

    ha ha, didn’t think so.

    You have made a huge error thinking that just because the techniques for DNA isolation were known the techniques can’t be used to perform a novel method. The technique for isolating BRACA wasn’t known and you couldn’t have done it without undue experimentation. Many if not most novel techniques use steps that are already known.

    For what it is worth, I was doing mutagenesis in the 90s using routine DNA techniques. I assure you I wouldn’t have had the first clue how to isolate the BRACA gene.

  99. Ned, your ability to misunderstand case law is astounding and you simply seem unable to grasp how the concept of the Product of Nature exception is a 101 doctrine and not a 102 doctrine.

    So please, once and for all. Stop trying to introduce 102 into the picture. The Supreme Court told you in very explicit terms in Prometeheus not to do that. STOP.

    You are the one who repeatedly misapply the doctrine.

    It is a 101 doctrine related to the post 1952 treatment of the Supreme Court and how that 1952 Act rescinded common law power from the courts in determining “invention.” It is a 101 doctrine, because that was where the Supreme Court stuck their fingers back into the patent pie and scooped out their judicial exceptions. Have you re-read Prometheus like I asked you to? Do so now.

    Pay attention to how the court treats its authority (take any 101 patent case post 1952 and see EXACTLY how the Court treats its authority). The Supreme Court is EXTREMELY careful to tie their patent pie fingers to the implicit words of 101.

    I recognize that this is an area of law that you are vastly confused about. You have my sympathy and I have shown you more patience than most would consider reasonable in attempting to teach you this area of law. But you really need to pay attention.

  100. You say I cite no cases, yet it is you Ned that cite no case in response to Chakrabarty, and its message, which you find convenient to simply try to ignore.

    As I have said, your pedantic games grow tiresome, and the ball yet remains in your court.

    I do not know why you think I resist “defining” what a product of nature is. It is a term of art and should be well known – even Malcolm has come around to using it (with much delight on my part to see him take a position of mine that at one time he attempted to ridicule).

    What I do resist are more of your pedantic games in trying to cloud the issue with the Monsanto case (and your repeated mistakes in that case running over into this discussion). As I have told you repeatedly, my distinguishing of that case was very clear.

    I will remind you that you ran away from the discussion then.

    And here, it appears that you are stalling and tryign to kick up even more dust instead of beinf intellectually honest and moving the conversation forward. You keep on asking questions when you need to be presenting law that supports your views.

    We both know why you are doing this – there is no law to support your views. The Product of Nature exception is real and will be used in this case. You might as well get used to the concept now.

  101. Isolation, I think you would be surprised to find that Badische was thought to be a product of nature case. It was relied upon by the Commissioner for that holding in Ex parte Latimer, 1889 Dec. Com. Pat. 123, which the Supreme Court noted was the case that originated the product of nature doctrine in the patent office.

    Badische is even today cited for that proposition.

    But, as you note, it is a case is about prior art and also about the scope of the claims.

    From the case:

    “There is another view of the case. According to the description in No. 95,465, and in No. 4,321, and the evidence, the article produced by the process described was the alizarine of madder, having the chemical formula C14H8O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter, and patentable as such, by reason of its having been prepared artificially for the first time from anthracine, if it was set forth as alizarine, a well known substance. The Wood Paper Patent, 23 How. 566, 593. There was, therefore, no foundation for reissue No. 4,321, for the product, because, on 312*312 the description given, no patent for the product could have been taken out originally.

    Still further, the claim of No. 4,321 is not a claim merely for the product of the process described in it, but is a claim for anything which may be called artificial alizarine, produced from anthracine or its derivatives, by either of the methods described, or by any other method, equivalent or not, which will produce anything called artificial alizarine. The scope of such a claim is seen in this suit. An article is sought to be covered by the reissue, which it is demonstrated Graebe and Liebermann never made by their bromine process, which they knew that process would not produce, which they recognized as produced first by some one else by a different process, and which has become the subject of a large industry abroad and an extensive use in this country, through discoveries made, as they acknowledge, since their bromine process was invented. After those discoveries were made, after it was seen that the bisulpho-acid process would produce desirable dye-stuffs, and could be worked practically and profitably to that end, it was sought to control the market for the product in the United States, by obtaining this reissue No. 4,321″

  102. Anon, thanks.

    1. You state that the later discovery by, for example, an infringer that a patented product IS a product of nature voids the patent. You cite no cases however, and none exist as far as I know. Every example given by or to the Supreme Court assumes the applicant himself discovered the product of nature.

    2. You also seem to resist defining what a product of nature is. Are compositions of matter reliably found or plants or animals that exist in nature and are "wild," products of nature? — or must it be also shown that the compositions, plants or animals did not originate from the inventor in order to invalidate the patent.

  103. “The fact that previous researchers did not realize the value in the information at the BRCA1/2 loci is a different issue”

    Which is precisely why the Myriad guys now argue that there was “invention” in discovery of such, and precisely why their (isolated) claims are going down as preempting uses of the discovery of the loci.

    But good luck to them.

  104. Not even remotely on point. Sounds like an obviousness/lack of written description and/or enablement rejection. But then again, for those who confuse 101 with 102, 103 and 112, it might be right on point as Ned says.

  105. Congress is OK with issuing patents to folks who are not inventors

    On the contrary, Ned, what Congress has done is change the definition of inventor. They very much STILL only issue patents to folks who are inventors.

    In your hypo, Joe IS an inventor. He is not an inventor of Y, but he does not claim to be so. He is an inventor of Y’ – and fully in accord with the constitutional mandate (in the eyes of Congress and the AIA), he fully deserves his patent for promoting the progress. On what basis then, do you conclude that this is beyond the power of Congress?

    I note that you failed to address the fact that the progress indeed has been promoted with both Y’ and Y now being shared with the public because of Joe. Likewise you fail to note what your hero Frederico has said about the redundancy of 102(f).

    Why is that?

    And further, you should consult the lessons that I have given you regarding Pennock and Golan v. Holder and exactly how much power Congress wields as to defining the rules of the patent race (including – apparently, defining who a racer may be) prior to venturing a reply (that should save us several merry-go-round spins).

  106. anon, state clearly, then, for the record, here and now, that the later discovery of the existence of a patented product in nature will not invalidate a patent on that very product.

    Why the (continued) attempts at pedantic word-play, Ned?

    Ned, I have stated clearly and on the record many many many many many many times:

    You may not have a patent on an item that is effectively a product of nature, even if such discovery that the item is a prodcut of nature (be it as simple as a crystal, or as complex as a living plant) is made after the grant of such a patent. The effect of such later discovery is to render the patent void as to ineligible subject matter.

    This is the clear an unfettered meaning of the phrase from Chakrabarty that you refuse to acknowledge and that you refuse to supply any legal citation to the opposite effect.

    Time for you to be intellectually honest Ned. Or at the very least, pick up the ball that has been laying in your court for so long now and find some legal authority to counter what was said by the Supreme Court in Chakrabarty.

    We both know the reason why you do not pick up the ball. Alas, it is your reputation that continues to suffer.

  107. Anon, you have confirmed my thinking. Congress is OK with issuing patents to folks who are not inventors so long as the patent does not withdraw subject matter from the public domain. In a sense, they have been doing this for quite some time by excluding commonly owned inventions from 102(f)/103.

    Personally, I think this beyond the power of congress. But we shall see. I think the 102(f) repeal remains central to the constitutionality challenge to the AIA.

  108. Thanks for the patentability analysis under 102/103. The case, however, is about 101.

  109. While you have made here an excellent argument for the patent-ability of the process of making purified/concentrated batches of particular DNA elements, this still does not, and should not, make the DNA thus produced patent-able; which in essence patents it when produced even by some other process or mechanism.

  110. Not much with your hypo.

    So?

    I think this is expressly in accord with what Congress wanted.

    I further believe that Congress completely believes that the policy that they implemented with this change serves the constitutional mandate. Consider that since Suzy’s Y is unknown to the world, the progress is promoted now that Joe has shared not only his Y’ but the Y as well.

    Of course, this has nothing to do with any other thoughts on this thread, so I am not sure what point you are trying to make. This certainly does not have anything to do with any of the patent eligibility exceptions that the Supreme Court has implicitly read into the words that Congress used in 35 USC 101.

  111. Ignore the troll, Ned.

    LOL – I am still loving it.

    Poor Malcolm, ignore me and concede the points I make. Don’t ignore me and prove just how much of a f001 you are.

    That’s a win-win for me.

    Life is good.

  112. Anon,

    Let's discuss hypos.

    Suzy discloses composition Y to Joe Blow in confidence. Joe describes composition Y in his spec and admits that Suzy invented Y, but states that the disclosure was in confidence. He then claims to have invented composition Y', the result of a notoriously well know process acting on Y.

    Without using Y as prior art, the so-called invention Y' is entirely novel.

    What can the examiner do with the repeal of 102(f).

  113. anon, state clearly, then, for the record, here and now, that the later discovery of the existence of a patented product in nature will not invalidate a patent on that very product.

  114. Why do you insist on having a “regardless of any oath issues” discussion?

    Are you not aware that the Congress (and even your hero Frederico) thought it was 102(f) to be superfluous in light of the oath issues?

    C’mon Ned – I tire of holding your hand on these legal discussions.

  115. Ned,

    Once again you are attempting to kick dust.

    I asked you first (and you never complied) to give me a cite to counter the example discussed in Chakrabarty.

    The ball is in your court.

    It has been sitting there for quite some time now.

    Please do more than kick up dust or try to shift a question back to me. Please ACTUALLY ADDRESS THE POINTS PREVIOUSLY MADE.

    Thanks.

  116. OK, Anon, cite me one case where the SC invalidated a patent based on a product of nature exception to patentable subject matter. Just one.

  117. quit kicking up dust and changing the subject, and stick to the issue at hand

    LOL – except you are the one who just changed the subject: “Okay, so what if…” compared to “If one admits in a specification that certain subject matter is not one’s invention

    That double Calvinball face sp1ke you took earlier today has really done you in IANAE.

    Better trolling please.

  118. silly analogy that doesn’t stand up to scrutiny.

    LOL – says the guy who keeps on trotting out the robot chef analogy – even after admitting that he knows and understands the controlling law regarding the exceptions to the printed matter doctrine.

    The word (still) for Malcolm: Hypocrite.

  119. No Ned, I have not.

    I distinguished my position in the Monsanto case quite clearly (“found in” is just not the same as “from”).

    You ran away from the discussion after I had done so.

    Further, you do not even have my position on the Monsanto case correct here – and please, let’s keep your errors contained and not mix you mistaken views of that case with the prsent discussion.

    I find it downright offensive for you to now return and try (once again) to say that I have held a position that I clearly have never held. I find it offensive for you to try (yet again) to ascribe an argument to me that I have never made, and fail to account for the arguments that I have made. You fail to address the points I ask you to address and you insist on saying things that can only be called (gentlemanly) outrageous lies.

    Not only is it mischaracterization of my position, it fails to even come close to my position. It’s like it is opposite day for what my position clearly is.

    Please pay attention and do not misrepresent what I have clearly stated.

    The Product of Nature exception is very real.

    It is a part of the Court’s implicit reading of the words that Congress used in 101.

    Period.

  120. Simply stated, gene sequence purification first requires knowledgable removal of unwanted moieties in a highly specific manner. This does not happen in nature.

    Even if you hold this to be true, this technology was invented and patented already.
    The specificity is determined by manufacturing oligo primers, a process which is already patented.
    The purification of DNA from White blood cells/tissue, already patented.
    The process of cloning into cell lines, already patented.
    Every currently known sequencing technique, already patented.
    SNP assay’s based on distinct sequence patterns, via RFLP, Hydrolysis probe, GWAS, SNP Array, etc. already patented.

    all of these patents are held by companies not called Myriad.
    If the argument is that the isolated and amplified product is a unique chemical compound then what about techniques like terminator dye sequencing that modifies the chemical structure or next gen sequencing that modifies the not only the structure but the sequence? How are these still infringement?

  121. Dave: Patenting genes, even in isolation, is like trying to patent a new tomato sauce by selecting different varieties of tomatoes to begin with. Novel maybe but obvious to any cook.

    Another silly analogy that doesn’t stand up to scrutiny.

    If I discover a new tomato, whether in my lab or in “nature”, and I create a new tomato sauce (or a new medicine) by combining that new tomato with old tomatos, how will you argue that my new composition is “obvious”?

  122. Fraud on the Office is still an offense

    Okay, so what if there isn’t any fraud? What if all those statements are true? He honestly and reasonably believes he is an original inventor of the claimed invention, but it turns out his claims happen to cover his colleague’s invention.

    Assume the claims are otherwise patentable.

    In other words, quit kicking up dust and changing the subject, and stick to the issue at hand.

  123. And that brings us back to the utility issue.

    Except it does not, as there is no “utility issue” for the Supreme Court in the Myriad case, as you fully know (or should know).

    That should be a clue as to why no party or jurist has addressed this.

    D’Oh! (said in the best Homer Simpson tones)

  124. If one admits in a specification that certain subject matter is not one’s invention, but also if there is no statement the subject matter is publicly available, can the admission be used against the applicant with the repeal of 102(f)?

    Quite apart from your dust-kicking Ned, you may want to recall that an Oath/Declaration is still made for every application.

    Fraud on the Office is still an offense if one considers statements such as:

    I believe that I am the original inventor or an original joint inventor of a claimed invention in the application.

    I believe I am the original inventor or an original joint inventor of a claimed invention in the application.

    I believe the above-named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application.

    and of course, accompanying each of the above:

    I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

  125. anon, yes you have. I have given you the example of Monsanto’s RR plant patents. The evidence abounds that they sexually reproduce and are found in nature. Yet you will not agree that the Monsanto patents are invalid. So, what you are saying is that there is no product of nature exception. What you are saying is that the one cannot claim a product of nature that the alleged inventor himself discovered.

    But that is 102(f).

  126. Isolation, you have a very good point here.

    Under present law, 102(f) would still bar a patent because what you are claiming is a preexisting composition.

    But now that 102(f) is repealed?

  127. If one admits in a specification that certain subject matter is not one’s invention, but also if there is no statement the subject matter is publicly available, can the admission be used against the applicant with the repeal of 102(f)?

    Example, a colleague at a company invents a new composition. You file a patent application on a particular use of that composition. Can the examiner use the admitted composition against you as prior art?

  128. And please, I have asked nicely, stop trying to kick up dust with a 102 doctrine. Have you gone back and re-read Prometheus yet?

    Please do so before you post again.

    Thanks.

  129. you have maintained numbers of times that finding a plant or composition in nature after the inventor has independently invented the plant or composition will not invalidate the patent.

    I have NEVER done so Ned.

    Never.

  130. Anon, the problem you have is that you have maintained numbers of times that finding a plant or composition in nature after the inventor has independently invented the plant or composition will not invalidate the patent.

    This puts a lie to your theory that there is a product of nature exception in 101. There is an exception, however, and it is in 102, namely, 102(f)(Now repealed.)

  131. The SC has already discussed this in this example

    LOL – Ned, you mean like the example discussed most on point in the modern era, Chakrabarty?

    Funny, how that example you want to dismiss out of hand (and without ever providing a citation to counter the example – as I have repeatably asked of you.

    Why is it that you shrink away from the most on point words from the Supreme Court? You will twist and turn and come up with all sorts of strange concoctions, but yet you refuse plain words, and you present no countering words.

    What you don’t discuss speaks volumes. When you don’t discuss it, screams so loudly that I cannot hear what else you are attempting to say.

  132. That is a good example. Thanks.

    If your claim is to a toaster having a resistive element connected on both ends to wires, said wires being ISOLATED from sources of electricity, then it seems to me you don’t have utility. When you plug those wires into an electrical outlet, you may have a useful device, but it is no longer what the claim covers.

  133. lol – like Francis and Keeping It real….

    (And Malcolm – you should know that song – it’s the 9-0 dance a jig, baby Prometheus classic)

    LOL

  134. information conveyed by the paper is not eligible for patenting:”

    LOL – cite please – and while you are at, please conform this BLATANT LIE with your own admission of what the state of controlling law is as regards the exceptions to the printed matter doctrine.

    Clutter? LOL – hardly. Cleaning up your crp misrepresentations and blatant llies can hardly be considered ‘clutter,’ Malcolm.

    But we both already know that. Just as we both already know that you are (once again) merely employing your vacuous spin instead of fact B$ in an attempt to further your agenda.

    Typical underwhelming intellectual dishonesty – attaboy Malcolm.

    (or is it Francis today – lol)

  135. Malcolm, you approach the issue from a prior art perspective, not a patentable subject matter issue, and this, I think is right. Compositions are eligible.

    Wrong Ned – and precisely why your treatment of Business Methods is seriously flawed.

    Just as “compositions are eligible” so too are processes (hence business methods).

    But this is ONLY true when you are discussin the category level.

    When you are discussing an individual claim level, ALL items are subject to the law of 101 – both compositions and processes.

    Your views here cannot sustain their own weight. Your atempted logic only results in self defeat. On both of your agendas.

    The Supreme Court needs to avoid the “constitutional” issue if at all possible

    I see ZERO compelling reason for this statement.

    Once again -you need to re-read Prometheus and understand what the Court will be playing with (their own created letters – implicit in the words of Congress – yes as the Court has told you – and to which you have turned a deaf ear – the Product of Nature exception is very real and will decide this case).

    Period.

    Any time you want to get off the merry-go-round, just let me know.

  136. Dave, this whole “product of nature” exception is a misconception.

    Wrong Ned. No matter how many times you repeat yourself, you will remain wrong Ned.

    You need to go back and re-read the Prometheus case and see how the Supremes guard their exceptions (the exceptions will NOT be made into dead letters).

  137. We have indeed gone through this Ned.

    You were wrong then.

    You are still wrong.

    See Chakrabarty. (it is you that is attempting to kick up the conflation of prior art into the 101 doctrine) See Prometheus.

    The Merry-go-round takes a spin. See Ned wave from the pretty horse.

  138. Malcolm, you approach the issue from a prior art perspective, not a patentable subject matter issue, and this, I think is right. Compositions are eligible. The question is whether they are new, or obvious.

    No doubt. But I would qualify this: compositions are eligible provided they are claimed as compositions, i.e., as structurally defined chemicals/objects that can be distinguished from the prior art on the basis of recited structures.

    A new, non-obvious piece of paper that is distinguishable from the prior art based on the recitation of its new, non-obvious structure is patentable (and eligible). A new, non-obvious piece of paper that is distinguishable from the prior art only by the recitation of new, non-obvious information conveyed by the paper is not eligible for patenting. There are other ways to skin this particular cat, of course. But the Supremes have not yet been asked to opine on those other ways yet.

    And Ned: try to avoid responding to the trolls and their s-ckpuppets. It clutters up the thread (their one and only goal).

  139. Houston we have a problem in that Iinjba scolds JW and then makes a similar mistake in not recoginzing how the term “discoveries” is treated in patent law.

    Oops.

  140. If the larger molecule is a product of human ingenuity, then human-made fragments of it must also be.

    This is quite plainly false as a new large man-made molecule will invariable comprise old moieties that are, by themselves, anything but “products of human ingenuity.”

    Anything as small as 15 nucleotides would only be used as part of a primer pair and, when used this way, the molecules would be 100% specific for BRCA1.

    This is confusing. For purposes of determining whether a composition is “new” or “a product of nature”, it doesn’t matter how the composition is used. What matter is the scope of the claim. If any of Myriad’s claims are limited to specific 15 nucleic acid long DNA fragments that were never before described, then it would seem that the Supreme Court, the ACLU and even some pig-ignorant blogtrolls would agree that the probes are patentable (notwithstanding the 100% certainty that the recited sequence may be found in some organism’s chromosome, somewhere on Earth). But it’s certainly also true that some (all?) of Myriad’s probe claims at issue in this case cover a vast number of oligonucleotides that are not specific to BRCA1/BRCA2.

    And that brings us back to the utility issue. There are several distinct questions, in my opinion, that have not been addressed by any party or jurist involved with this case (nor, strangely, by the exceptionally verbose pundits over at Patent Docs).

    (1) What does one do with the fact that the overwhelming majority of molecules covered by Myriad’s broadest composition claims have no significant utility?

    (2) If a new, non-obvious composition is deemed ineligible because it’s only use is as an object for further study, is it somehow possible to obtain an eligible method patent on a routine method of studying that new, non-obvious composition?

    and lastly (perhaps the most important):

    (3) Does a composition with insignificant utility (“use as a probe for assaying the presence of its complement”) become ieligible in each case where some downstream “therapeutic” use is identified for the information obtained from the assay (e.g., a positive result correlating with some likelihood of disease susceptibility)? Or (more likely?) are some correlations more “significant” than others?

  141. I believe that 35 USC 101 means what it says: “Whoever invents or DISCOVERS any new and useful … composition of matter, or any new and useful improvement thereof.”

    If elemental fluorine cannot exist free in nature, then whoever makes it first should be entitled to a patent IMHO. That F (fluorine) can be placed on a periodic table does not make it any more a “natural phenomenon” than placing a picture of a submarine fom a Jules Vern novel in a collage.

  142. “What’s missing, of course, is an admission of the obvious: at least some of Myriad’s claims are so broad that they certainly read on the prior art.”

    Yet another example of falling victim to the siren song of 102/103 posing as 101.

  143. “Even if we assume that the production of the BRCA isolated genes is enough abstraction from nature to be patentable …, I can assure you that to do this with any individual gene was obvious to even a junior researcher back in 1989. Every single previously isolated gene is prior art.”

    Yet another victim of the siren song that confuses 102/103 with 101.

  144. Wow. That’s about as narrow minded as I’ve ever seen. Gadgets in a box that have a plug have NO UTILITY (except as a paper weight or door stop) unless plugged into an outlet, yet no one is required to also claim electricity or outlets as part of the inveniton.

    It seems that Mechanic engineer isn’t even doing engineering, much less biotech.

  145. The SC has already discussed this in this example:

    Consider the battery was once known in the ancient world (and it was). Would the discovery of that ancient battery by others invalidate a patent on the battery?

    No.

    And the reason is the knowledge was lost to man. At the time of the modern invention of the battery the ancient batter was lost to history as if it never existed.

    But, if the alleged inventor discovered the ancient battery and tried to claim it as his own?

    No again. That was not his invention.

    102(f)(NOW REPEALED)

  146. And let’s not forget the statute, which says: “Whoever invents or DISCOVERS any new and useful … composition of matter, or any new and useful improvement thereof.”

    Patents are not just for “inventions,” but also cover “discoveries.”

  147. Malcolm, you approach the issue from a prior art perspective, not a patentable subject matter issue, and this, I think is right. Compositions are eligible. The question is whether they are new, or obvious.

    There is a genuine 101 issue here, or better, a genuine 112 issue. Do the claims claim more than what was discovered, the association between the mutation and the cancer?

    The bottom line is this: how can this be a genuine 101 issue at all (judicial exception) if the issue is covered entirely by an Act of Congress? The Supreme Court needs to avoid the “constitutional” issue if at all possible.

  148. “Of course this happens in nature! It’s called evolution.”

    Uh, not at all. “Evolution” by definition is not a willful act, much less a “knowledgeable removal of unwanted moieties” (do you even know what that is?) or a “purification”. It is certainly not an “isolation” of anything. It is a process whereby purely RANDOM mutations of an ENTIRE GENE ramdonly provide a competitive advantage to a species. There is no way isolating DNA is even remotely like “evolotuion.”

  149. The “invention” is what is defined by the claims. If the claims are to the DNA sequence, that is the invention.

    And note the patent statute covers both “invent[ion]s” and “discover[ie]”

  150. Here is an interesting hypothetical:

    Should the claim “1. A product comprising Isolated Fluorine” been patenable when it was first isolated in the 1880’s?

    Considering: 1. Fluorine is a fundamental element.
    2. Fluorine is so reactive it doesn’t exist in an isolated state and is covalently bonded to other elements.

  151. Jack Waldron: “And chemicals should not be patentable.”

    “Houston, we have a problem. Jack Waldron posts on a patent blog, yet doesn’t even understand 35 USC 101, which reads in part: “Whoever invents or discovers any new and useful … composition of matter, or any new and useful improvement thereof.”

  152. Gosh, well, hmmm … odd timing for this, to say the least. What’s missing, of course, is an admission of the obvious: at least some of Myriad’s claims are so broad that they certainly read on the prior art (they don’t read on prior “natural products” but on earlier “isolated” nucleic acid compositions made and disclosed by researchers).

    Some forthrightness on the definition of the term “isolated” is appreciated but questions remain …

    “Isolation” under the patents requires specific, targeted purification/enrichment of BRCA1- or BRCA2-related molecules, which was not routine or even possible before Myriad’s invention.

    To be clear, a “related” molecule according to the claims is any one of a nearly infinite number of molecules comprising the sequence recited in the claims. That claim breadth is a problem for Myriad’s argument here, at least with respect to its broadest claims. It was both routine and possible to purify/”enrich” such molecules prior to Myriad’s invention and it was likely done prior to Myriad’s invention (i.e., human chromosomes had been spliced up and inserted into vectors which would qualify as “isolation” according to this definition). The fact that previous researchers did not realize the value in the information at the BRCA1/2 loci is a different issue. Consider: I can’t patent a doohickey over a prior disclosure of how to make a doohickey just because the prior disclosure didn’t describe the doohickey’s desirable properties.

    In the area where the Myriad case has the most potential impact, because new isolated DNA patents are common and thus incentivizing new discoveries is most important today, there is no distinction between genomic DNA and cDNA. Bacteria, for example, have no introns, which means the reverse transcription product of mRNA (i.e., what you might call a cDNA) has a sequence identical to genomic DNA. In essence, there is no such thing as cDNA in bacteria. DOJ’s position would make all isolated DNA claims patent-ineligible in any organism without introns.

    True enough. And another fact that will be nearly impossible for the unskilled observer to digest: the vast majority of the world’s DNA is inside bacteria, including the vast majority of DNA encoding proteins with as-yet-unknown but potentially useful functions.

  153. Dave, this whole “product of nature” exception is a misconception. There is no product of nature exception. There is a prior art exception called, I did not invent that — 102(f). Obvious variations are also not patentable. This is not a 101 issue.

    What is a 101 issue is a law of nature, the association between the mutation and the cancer. How one can claim this discovery, and it is meritorious, is the real question.

  154. anon, if you actually read the so-called Supreme Court product of nature cases from 1800’s, they were both based on known products.

    Chakrabarty’s examples were based on the discovery of a plant or mineral by the so-called inventor.

    These are examples of prior art. They exist. They are discovered. They are not the invention of the claimant.

    102(f).

    Prior art.

    Obviousness.

    Not 101.

    We have gone through this. Anon. If one makes a new bacteria, it makes no difference if later the very bacteria is discovered in nature. The patent is valid.

    Prior Art.

    102(f), NOW REPEALED!!!!!

    If we say that prior art is now a 101 issue, we are really going to mess up the patent laws.

  155. As a former molecular biologist, let me throw my $0.02 in here. I left the molecular biology field in 1989 but every technique described for “manufacturing” this “new” molecule was routine to me back then, albeit a little more cumbersome because a lot of the steps can now be carried out by machine rather than as a manual process at the lab bench. However even as early as that my colleagues and I routinely created and amplified cDNA copies of functional RNA to investigate the properties of a single gene without the “noise” in the signal of the intron sequences. Even if we assume that the production of the BRCA isolated genes is enough abstraction from nature to be patentable, which is a legal rather than scientific question, I can assure you that to do this with any individual gene was obvious to even a junior researcher back in 1989. Every single previously isolated gene is prior art. Patenting genes, even in isolation, is like trying to patent a new tomato sauce by selecting different varieties of tomatoes to begin with. Novel maybe but obvious to any cook.

  156. “6. Every Chemical Invention Is Possible in Nature.”
    based on the rules for patenting, this means no chemicals should be able to be patented at any time, if taken literally.

    What?

  157. “Patentability shall not be negatived by the manner in which the invention was made.”

  158. Careful there IBP, all of sudden you might be charged with having English as a second language (or some such little circle vacuous attack).

  159. At least this author has unapologetically bared his vested interest in this issue, unlike many of the pseudo-intellectual “professorial” classes who sometimes appear here.

  160. Yes, Ned, I think that is right. Throw in there the information predictive element of it. That this gene if it looks like X may mean you develop cancer.

    That information element should be patentable. I know the king of the Trolls (MM) disagrees.

  161. Mr. Myriad says: “But isolation under the patents is not just “snipping” molecules as they sit in their natural environment. Isolation under the patents also requires purification (i.e., concentration) of the newly created molecule out of the interfering milieu.”

    Accepting this as true, what is the utility? Bottle of BRCA stuff has no utility until bits of it are put back into cells– then they are no longer “isolated.” Assuming that the claim is patentable, it seems to me that it is nearly impossible to infringe.

  162. Waiting to watch Malcolm do his wild dance and come to the position on this case that I initially put forth (and that he simply could not grasp).

    Malcolm, bring the popcorn.

    Thanks.

  163. Further, there is no product of nature exception

    Of course, Ned – you are completely wrong on this.

    Your attempt to (once again) confuse a 101 doctrine with a 102 doctrine should not surprise anyone. You continue to flout the words of the Supreme Court when they do not suit your agenda.

    Shall we crank up the merry-go-round for you?

  164. Merely being new is not enough under section 101; the claimed invention must also be useful. This is where the statute really does its work and gives courts an objective yet flexible framework for giving proper force to the legislature’s intent. Not just any utility will do. The claimed composition must have one or more significant new utilities and these new utilities must directly result from the structural, physical or chemical changes made by the inventor.

    On the contrary, “useful” is an extremely low threshold. Sec. 101 eligibility does not require that the useful purpose be “new”, let alone significantly new. It is sufficient that a new process, machine, manufacture, or composition of matter achieve any useful purpose. And nearly anything has at least one legitimate useful purpose, even burglary tools.

  165. Isolation, we are not talking here about an isolation process. That certainly is not the invention.

    What is discovered is the association between a gene mutation and certain cancers.

  166. Jack Waldon is yet another victim of the siron song of 102/103 posing as 101. His statement demonstrate exactly why DNA sequences are new and useful and hence patent eligible under 101 even if they might be anticipated or obvious.

  167. Not one word about Prometheus and what was really discovered, the association between a certain gene mutation and certain cancers. Sweet got it right in that focusing on the chemistry is a red herring. Each DNA sequence is like every other DNA sequence chemically. It is the sequence that is important — the genetic code.

    That discovery is worth protecting. But how to claim it is the problem, just as it was in Prometheus.

    (Further, there is no product of nature exception. There is a prior art exception under 102(f)(now repealed). One cannot claim that which is old even if he is first to discover a use for it.)

  168. Isolation said …

    Simply stated, gene sequence purification first requires knowledgable removal of unwanted moieties in a highly specific manner. This does not happen in nature.

    Of course this happens in nature! It’s called evolution. although, I’ll grant that the first person who figured out how to dissect DNA was worthy of a patent. For the technique of how to isolate DNA, the end result simply is a by-product of the process, and SHOULD not be patentable. In a logical world. But who said Humans were logical?

  169. And chemicals should not be patentable. It’s not an invention to try every feasible combination until you get the desired property. Machines today can do thousands of chemical compositions in an matter of minutes, and automated processes can subject those chemical combinations to tests for the desired property.

    Where is the human invention in that? In the machine(s) that allow you to do all this. Have you seen the patent for lithium polymer batteries? The inventor found one combination that worked and then proceeded to add every other possible oxide composed of 4 oxygen atoms and another atom and having a -1 charge. Well Duh!

  170. I wonder of if one has to understand chemistry and how atoms bind and decouple to make compounds before the brain is sufficiently competent to grasp what is meant by “isolation”. That is the crux of the matter. Analogies like pulling a leaf off a tree or even purting a tree limb on a lathe to make a baseball bat are way off the mark. Simply stated, gene sequence purification first requires knowledgable removal of unwanted moieties in a highly specific manner. This does not happen in nature. Second, it requires amplification to produce a concentrated sample of many of the same gene molecules and the exclusion of essentially all others, which CANNOT and does not EVER happen in nature. There is no analogy that quite describes this reality, and it is pointless to grasp a hold of such. Comments here that fail to address the fundamentals of chemical change illustrate why the Supreme Court, being equally devoid of people without an understanding of chemistry, may create a mess of a very straightforward and clearly patentable chemical composition.

  171. I see this as a “I wish I argued all of this in court” post. It’s late for that, and at no point whatsoever can I see any valid argument for allowing a part of nature acknowledged to be as such *BY MYRIAD* when discussed to SCOTUS to be patented.

    this is the “man, I wish I said these things” without acknowledging they crush the entire argument.

    “6. Every Chemical Invention Is Possible in Nature.”
    based on the rules for patenting, this means no chemicals should be able to be patented at any time, if taken literally.

  172. Only teachings that can by carried out (by a PHOSITA) are patentable subject-matter. While § 112 does not replace § 101, it indicates that mere theories and facts are not patentable, however advanced, valuable and costly perhaps.

    Because a patent represents a “property rule”, an exclusive right to a mere fact or theory would have an ill-defined but probably overly wide scope.

    The Supreme Court was clear in 1966 when it noted that “a patent is not a hunting licence” (Brenner v. Manson, 383 U.S. 519, 536; 86 S.Ct. 1033, 1042). And Prometheus v. Mayo was equally clear (and unanimous!)

  173. At least Hal Wegner might read this and stop asking why Myriad did not moot this case while it had the chance.

  174. The Lander brief calls purification of DNA routine, but only in the context of randomly purifying all nucleic acids out of a sample. “Isolation” under the patents requires specific, targeted purification/enrichment of BRCA1- or BRCA2-related molecules, which was not routine or even possible before Myriad’s invention.

    I wonder what exactly Myriad’s invention was. The words here imply, to me, that the invention is the method, not the product.

    I’ve never been comfortable with patents on purified chemicals. I’ve always thought that the patent should be on the method not the product. If the product existed (or could exist) before then the inventor hasn’t really invented the product, just discovered it, so the product shouldn’t be worthy of a patent. Only the method of purification should be worthy.

  175. I’m sure the nine Justices will be sure to read this post and base their decision on it. Or, to be a little less sarcastic, isn’t all of this completely academic, considering that in a few months, SCOTUS will be telling us how it really is?

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