At a Conference on Life Sciences

I’m speaking shortly on ethics (inequitable conduct, mostly), but have been listening intently to the various speakers.  Some big picture issues:

They all think that the 101 jurisprudence is unworkable and puts at risk entire industries. First, (by definition) pretty much everything involves natural phenomenon or a natural product.  Second, it’s idiotic:  if you discover (which, despite the Constitution and the definitions in the statute is not an “invention” according to the Supreme Court) a natural product, if it’s easy to make use of you can’t get a patent; if it’s really hard to use, then you can. (That is, if you can use (viewed post hoc, of course) conventional methods on the newly discovered natural product, you can’t get a patent, but if it takes a lot of new stuff beyond that, you can.)

They’re worried about the Akamai mess and divided infringement and its impact on method claims in this field.

People should obtain opinions of counsel due to the “you believe it’s invalid” aspect of inducement.

More on that point:  suppose I know I induce infringement of a patent. But, I reasonably believe it’s invalid. But it turns out the CAFC, PTO, etc. say it’s valid.  Does it matter for pre- CAFC conduct versus post-CAFC?  What if I have art that the CAFC/PTO didn’t consider?  Commil is wrong, imho.

This was live-blogged so excuse my grammar/typos.

6 thoughts on “At a Conference on Life Sciences

  1. But it turns out the CAFC, PTO, etc. say it’s valid. … What if I have art that the CAFC/PTO didn’t consider?

    Just to be clear, the CAFC, PTO, etc., can say only that a patent is not invalid over the art that’s in front of them. If you weren’t involved in those proceedings, and you have an objectively reasonable view that the patent is invalid over different art, then those proceedings have nothing to do with an inducement case against you.

  2. (That is, if you can use (viewed post hoc, of course) conventional methods on the newly discovered natural product, you can’t get a patent, but if it takes a lot of new stuff beyond that, you can.)

    How would you get past obviousness on this anyway? Applying known methods to achieve a similar result is a stated obviousness rationale.

    1. Hmmmm… if no one knows that you can examine X from the human body, using existing methods, to discover Y disease, until I discover X exists, is it rational to say that it was obvious to use methods on X, which no one knew existed? If I’d asked anyone skilled in the art “can you use routine methods to discover whether someone has Y disease?” they’d say “no, no one knows what to look for.”

      The hindsight nature of 101 and “conventional methods” is I think another issue with it…

  3. On 101, one word caught my eye, namely “unworkable”. That’s rather worrying, and I suspect it is over-pessimistic.

    The EPO White Book of its caselaw on “technical” is by now, after 30 years of evolution, quite mature. It is no longer amorphous. It has crystallized. Practitioners who are on top of the caselaw know, with ever-increasing levels of confidence, what is eligible/patentable in Europe; technical means, to solve an objective technical problem in a way not suggested by the state of the art. If the Appeal Boards at the USPTO were to become familiar with that caselaw, and use its reasoning, I think they could “work” in compliance with the instructions from SCOTUS, with ever-growing confidence. Then, after 30 years, we will know better what eligibility means.

    But by “unworkable” am I to understand that the commentators are gloomy because the see no possibility of the CAFC ever being competent enough to frame their precedents well enough to crystallize around the SCOTUS seed?

    1. On 101, one word caught my eye, namely “unworkable”. That’s rather worrying, and I suspect it is over-pessimistic.

      I suspect you are quite right. In prosecution I haven’t seen any evidence that the PTO is rejecting claims on the grounds that “everything involves natural phenomenon or a natural product.” And there’s not any evidence that the district courts are buying that, either.

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