May 2005

Study for the Patent Bar for Free

I just ran across the website for openIPsource and their free patent bar review course.  (via Matthew Goeden). The website for openIPsource provides its content for free and without registration.  This includes the following materials:

  • Annotated MPEP
  • Comprehensive MPEP Summary
  • List of Important Dates
  • Detailed Glossary
  • MPEP Table of Contents and Index
  • Past Exam Questions by MPEP Chapter
  • Past Exams since 1999
  • Study Guide
  • Patent Laws and USPTO Rules



Res Judicata Must be Determined Separately for Each Asserted Patent

PatentlyOImage038Abbey v. Mercedes Benz of North America (Fed. Cir. 2005) (NONPRECEDENTIAL)

After a long litigation proceeding involving multiple dismissals and re-filings, a Florida district court granted summary judgment to the defendants on the grounds of Res Judicata for each of Abbey’s three asserted fuel-injection patents.  One of the patents, although related to the others, had issued after Abbey’s claims had been initially dismissed.

On appeal, the CAFC found that the continuation patent could not be the subject of a dismissal for res judicata.

Because each patent asserted raises an independent and distinct cause of action, and because on this record, Mr. Abbey’s claims of infringement of the ’977 patent were never considered by the district court, they are not part of the final judgment that concluded the first lawsuit. Accordingly, a claim of infringement based on the ’977 patent is not precluded by that judgment and can be the subject of a second lawsuit.

Vacated and remanded.

Patent Practitioner Organization Supports Certain Patent Reform Measures, Rejects Others

The National Association of Patent Practitioners (NAPP) has provided its comments on the proposed patent reform legislation.  NAPP is primarily made-up of patent agents, and the organization’s viewpoint is seen as an important representation of the views of individual inventors.

In its introduction, NAPP takes-on the flippant usage of the term patent troll.

Some of the rhetoric by proponents of the Patent Act of 2005 has been highly troubling and obscures the debate. . . . A “patent troll” is apparently a derogatory term used by people or entities to refer to an inventor who has the audacity to assert a patent against them.  Such usage is an attempt to apply colored language, in a mindless way, to attack the entire < ?xml:namespace prefix ="" st1 />U.S. patent system. . . . To the extent that the term is used to derogate inventors who do not develop corporate structures or manufacture products, NAPP believes that inventors who merely invent but do not manufacture products – which, after all, includes most university and government researchers – do not deserve epithets or less patent protection.  Finally, to the extent that the term is used to refer to people who try to enforce invalid patents, NAPP believes that there are sufficient existing disincentives against such practices.

With regards to the individual provisions, NAPP supports post-grant opposition proceedings and the proposed changes to the duty of candor procedures.  However the organization also has stated quarrels with the following provisions:

First-to-File: This is a controversial issue. “Congress should not be fooled into thinking that this proposal has become less controversial or more accepted over time.”  Practically, this change makes things difficult for a patent practitioner who operates with a backlog of cases.  NAPP expects that the provision would decrease patent disclosure quality because practitioners will rush to file the documents. This increases the opportunity for attorney-malpractice.

Limits on Broadening Claim Scope: This “is an ill-conceived, poorly worded, and unworkable proposal. . . . NAPP strongly opposes this provision.” 

Universal 18–Month Publication: NAPP is against universal publication. One problem is that it would prevent “applicants from adopting the strategy of trying to get a patent and relying on trade secret protection as a fall-back if satisfactory patent protection cannot be secured.”

Inter Partes Reexamination Estoppel: NAPP is against removal of the provision that prevents a patent challenger from first bringing (and losing) an inter partes reexamination request challenging validity, then challenging validity of the same patent again in a court proceeding. [UPDATED TO FIX CORRECTION]

Limiting Damages to Components: This would just result in claim drafting mischief.

. . .



In Bifurcated Trial, Pending Antitrust Claim Postpones Permanent Injunction


ArthroCare v. Smith & Nephew (Fed. Cir. 2005) (04–1323).

ArthroCare holds a set of patents covering electro-surgical instruments for use in arthroscopic surgery. ArthroCare sued Smith & Nephew for infringement of the patents, and in response, Smith & Nephew alleged that a prior settlement between ArthroCare and Ethicon constituted a conspiracy in restraint of trade.

In a bifurcated case, the jury found that Smith & Nephew infringed and that the patents were valid.  Following the first trial, the Delaware District Court stayed the antitrust trial pending resolution of post verdict motions — However, before the stay was issued, ArthroCare filed its motion to dismiss the antitrust claims.

After post-trial briefings, the court entered a permanent injunction against Smith & Nephew and, on the same day, dismissed the antitrust claims — finding that Smith & Nephew was presumed “not to oppose the motion” because it had not submitted a response to ArthroCare’s motion.

On appeal, Smith & Nephew argued that because of the stay of proceedings, it never had an opportunity to respond to the motion to dismiss. The Appellate Court agreed — finding that the district court had improperly dismissed the claim.  Because the outcome of the antitrust issue may alter the permanent injunction, the CAFC also vacated the injunction.

With regard to Smith & Nephew’s arguments regarding the merits of the patent case — the CAFC affirmed the jury verdict of infringement and validity.

File Attachment: ArthroCare v. Smith & Nephew (79 KB)

Preemption: Copyright Act Does Not Preempt Illinois Right To Publicity

Ultra Sheen SupremeToney v. L’Oreal USA (7th Cir. 2005) (CV 03–2184).

June Toney consented to allow her photograph to be used, to advertise a hair-relaxer (“Ultra Sheen Supreme”) by Carson Products.  L’Oreal later acquired the Ultra Sheen line and began to use the photo without her permission and beyond the time-period specified in the original contract, Toney sued — alleging a violation of her right of publicity under Illinois law. The district court dismissed the case as preempted under 17 USC 301.

On appeal, the Seventh Circuit panel vacated, finding that the Illinois Statute protecting the right of publicity is not preempted by the copyright act because the rights to publicity protect the identity of a person rather than a particular tangible picture or photograph.

Therefore, the bottom line is that Toney’s claim under the Illinois right of publicity statute is not preempted by federal copyright law.

Vacated and Remanded.

File Attachment: Toney v. Loreal.pdf (26 KB)


Patent Reform: Sharp Dispute Over Injunction Provisions

Brenda Sandburg at The Recorder has an interesting article out today that focuses on the injunction provisions of the proposed patent legislation.  The proposal reduces the likelihood of obtaining an injunction — even after a finding of willfulness.  One of the factors included in the legislation is whether the patentee is commercializing the invention — a move to limit the power of patent holding companies.

The article includes some disagreement regarding the prevalence of lawsuits by patent holding companies:

  • Peter Detkin (Intellectual Ventures): Only 2% of patent cases filed in the past five years were filed by holding companies that don’t sell any products — and 1/2 of those suits were by Acacia Technology Group.
  • David Simon (Intel): Most cases involve Fortune 500 companies being sued by unheard-of companies.

Looks like a great research opportunity for a law review article.

Ron Riley, who’s inventor’s alliance has helped to block patent reform in the past is looking for reform measures going the other way:

  • Measures to stop large entities from influencing the PTO to systematically harass inventors on behalf of those companies;
  • Increase punitive damages for up to ten-fold for willful infringement; and
  • Perhaps add criminal provisions for willful infringement (as have been added for copyright violations).


Online Inventor’s Forum

The Patent Office has been hosting a regular on-line chat session between inventors and PTO expert examiners.  These sessions have been a great success, and the most recent session appears to have answered a number of interesting and fundamental questions.  The following are a few excerpts from the forum:

Q:What happens to a Provisional Patent Application after it has been abandoned?

A: The files are disposed of after one year from the filing date.

Q: Are there any restrictions from trademarking a product name that contains Spanish words?

A: The same laws and rules apply to marks in languages other than English. Other than those requirements, a non-English mark would have to be translated for the record.

Q: How long does a patent last?

A: Utility patent protection is approximately 20 years from the filing date of the application. Design patent protection is 14 years from the issue date.

Q: How do I know that my invention isn’t going to be stolen during the application process for a patent? Can I trust an attorney? Can I apply for a patent without an attorney? What are the risks when I do that?

A: All patent applications that have not been published are kept in confidence by USPTO personnel. An attorney in your employ must keep your confidences and secrets. You can apply for an application without an attorney, however, patents are legal documents and the use of a registered patent attorney/agent is strongly encouraged.

Q: Can I apply for a design and utility patent for the same product or is this overkill?

A: Yes, you can apply for both patents. A utility patent protects a new, useful, nonobvious and adequately discussed machine, manufacture, composition of matter, process, or improvement thereof. On the other hand, a design patent protects only the appearance of an article of manufacture, not the way the article functions or the materials of its manufacture. A better mousetrap could function (work) exactly like the mousetrap of old, but have a different appearance; it would then be appropriate for a design application. If, however, it had a new function in a way it trapped mice, it could also be appropriate for a utility application.

Link: Forum Transcript

Texas Patent Attorney Shot and Killed.

PatentlyOImage036In a bundle of sad news, it appears that late last week, patent attorney Jackie Duke of Houston shot and killed patent agent Michael Hartmann before killing himself.  Hartmann was an in-house counsel at Cooper Cameron and head of the patents department.  Duke also worked as a consultant for the Cameron patent department. The shooting occurred at Cooper Cameron headquarters in Texas.

Our thoughts and prayers go out to their families, friends, and co-workers.


PTO Moves Forward with Nanotechnology Classification

On May 4, 2005, the Patent Office held a Nanotechnology Customer Partnership Meeting as a forum for two-way-feedback on the PTO’s nanotechnology initiatives.  Blaise Moullet attended the meeting and provided background for the following summary:

Searching: A new cross-reference classification (977) will likely include search areas for (i) nanostructures; (ii) computer software for nanostructure modeling; (iii) manufacturing, treatment, or detection of nanostructures; and (iv) specific uses of nanostructures. The new classification system is intended to both ease examination and inform applicants and the public of the ‘state of the art.’

Global: The PTO has provided their proposed schedule to the EPO and JPO and is hoping that it will be adopted by each agency.

Concerns were raised that the PTO does not have specific plans for providing a core group of examiners with expertise in nanotechnology.  There are no definitive plans to form a nanotechnology art unit.


Rapper Ludacris Provides Ordinary Meaning of Terms

PatentlyOImage035Insurance litigator John Mejia sent in news of Google’s News patent application that ranks news items based on source quality.  (Patently-O is still ranking fairly well in Google’s news listing.)  In his reporting on the topic, Ron Coleman provided the improvement of basing the quality of the source on its political affiliation. Ron also talked about the inherent boring nature of the great patent law blogs.  A non-boring court opinion was recently released in the Seventh Circuit case of US v. Murphy (04–2032).  Although Murphy is a criminal case, it provides some interesting comments regarding the meaning of terms.  Quoting from Footnote 1:

The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch “hoe.” A “hoe,” of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden’s response. We have taken the liberty of changing “hoe” to “ho,” a staple of rap music vernacular as, for example, when Ludacris raps “You doin’ ho activities with ho tendencies.”

In the future, if the courts needs definitions of other terms that are yet to arrive in Webster’s, they might turn to the Urban Dictionary.

File Attachment: US v. Murphy.pdf (25 KB)

Another Topic Interior Design: We have a very close family friend who is also a talented designer.  Her problem is that she is located in Manhattan, Kansas — a rising senior in the Kansas State University (KSU) interior design department — and is having some trouble finding a summer opportunity.  Any ideas or opportunities? (Shoot me an e-mail and I’ll send you her resume: I’ll vouch for her character and fitness (She wrote a song and sang it in my wedding when she was a middle school student).  

Claim Term of “Conventional Computer” Limited to Computers Available as of Patent’s Effective Filing Date

Patentlyoimage034 PC Connector Solutions v. SmartDisk (Fed. Cir. 2005).

PC Connector sued SmartDisk for infringement of its patent directed to the connection of peripherals to a computer via a coupler inserted into the disk drive.  The claims include limitations such as “an input/output port normally connectable to a conventional computer input/output port.”

SmartDisk argued that its flash memory cards could not infringe the patent because, like other terms in the claims, the terms “normally” and “conventional” must be interpreted as referring to technology that existed at the time of the invention.  The district court agreed, finding that there could be no literal infringement because flash memories were not in normally connectable at the time the patent was filed in 1988.

On appeal, the Court of Appeals for the Federal Circuit affirmed, finding that a claim’s “meaning must be interpreted as of its effective filing date.”  As such, the appellate panel held that SmartDisk did not infringe because “even a casual observer, [the flash memories] cannot be connected to a vintage 1988 computer I/O port that uses a multi-pin connector, there can be no literal infringement.”

Prosecution Tip: Do not use the modifiers such as “normally,” “traditional,” or “conventional” in your claims. Such limitations do not allow you to overcome any prior art but do severely limit the scope of the claims.

Patent Marking: Statute Requires Good Faith Belief that Mark is Properly Applied

PatentlyOImage033Clontech Laboratories v. Invitrogen Corp. (Fed. Cir. 2005).

Clontech sued Invitrogen for falsely marking its biologic products. Under 35 U.S.C. Section 292, falsely marking a product with a patent number or even the word “patent” or “patent pending” is an offense if done with the intent of (i) counterfeiting the mark of a patentee or (ii) deceiving the public. The fine is capped at $500 per offense. At the district court, Invitrogen was found liable for false marking.

On appeal, the CAFC panel noted that this case raises “virtually an issue of first impression.”  After reviewing the evidence presented at trial, the panel reversed-in-part, finding clear error in the trial court’s finding that certain test results had put Invitrogen on notice of the falsity of its marks relating to reverse transcriptase.

Regarding its cDNA library products, Invitrogen argued that Section 292 “does not require a good faith belief that the marked article falls within the subject matter” of the claims. The CAFC disagreed with that argument, finding that from a policy perspective, marking should be reliable to permit free and fair competition and commerce. Thus, the appellate panel affirmed the district court ruling that the cDNA library products were falsely marked.


Eight tips for avoiding unpatentability rejections in Business Method Cases

One of the most interesting presentations at the May 4, 2005 business method partnership meeting was by Bob Weinhardt who is a Business Practice Specialist at the PTO.  Mr. Weinhardt managed the “second pair of eyes” review of allowed applications in the Business Methods art and provided a checklist of common problems that were uncovered in those reviews. Although in my view, some of the PTO’s policies do not conform with the law, Mr. Weinhardt’s comments are quite useful if you want the PTO to allow your cases. I have compiled the presentation into these following eight tips:

1) Specifically call-out a practical application of any claimed algorithms (relate it to the real-world).

2) In method claims, explicitly relate the method to a machine (such as a computer) in the body of the claim.

3) Data per se is not patentable.

4) Non-functional data (as opposed to computer code) stored on a device (such as a computer disk) is not patentable.

5) A claimed computer program per se will be rejected unless it is tangibly embodied on a computer readable medium.

6) For signal claims — the signal must firmly related to a machine or computer readable medium.

7) Don’t try to get a patent on an invention that merely uses the Internet or a computer to do what was previously done by hand.

8) Think about your claims in terms of the broadest reasonable meaning.  The PTO would rather not implicitly import limitations into the claims.

Updated Business Method Patent Statistics

On May 4, 2005, Technology Center Director John Love and his able group of e-commerce patent examiners hosted a well attended partnership meeting to discuss current and upcoming issues in the field.  The meeting is an annual event and provides an excellent opportunity to meet with the leadership on a more informal basis. I want to publicly thank the Director Love, Joe Thomas, and the entire crew for being so helpful and forthright.

In the meetings, Director Love always provides some helpful statistics. Perhaps the most telling number from the most resent event is the 11% allowance rate for FY2004 in class 705.  [Calculated as (allowed)/(allowed + abandoned)].  Although this issue was not raised at the meeting, it is clear from the numbers presented at the meeting that the backlog in the class continues to grow.  By using Director Love’s numbers on allowance, percent allowed, and new filings, I created the following table to demonstrate the continued growth in the backlog of business method cases:

Fiscal Year

Number Allowed

Percent Allowed

Disposed (Abandoned or allowed)

New Filings

Cumulative Backlog

























Conclusion: Over the past four years, the backlog has increased dramatically.

Second Pair of Eyes: The business method group instituted a ‘second review’ of business method cases as a quality control measure.  Although still termed “second pair of eyes,” the meaning of the term has changed.  The reality is that the second review is now simply a meeting between the examiner, the primary examiner, and the SPE at which the examiner explains his reasons for allowance.  This process will hopefully payoff by helping to reduce the backlog.  Perhaps partly due to this new procedure, allowed cases for FY2005 in Class 705 are projected to shoot over 700.



Blade Wars: Gillette Wins Latest Round in Multi-Blade Razor Patent Litigation


Gillette’s patent disclosing a three-blade razor also covers a four-blade version.

Gillette Co. v. Energizer Holdings Co. (Fed. Cir. 2005).

By Baltazar Gomez

Gillette owns U.S. Patent No. 6,212,777 for wet-shave safety razors with multiple blades. Gillette sued Energizer in the United States District Court for the District of Massachusetts alleging Energizer’s QUATTRO®, a four-bladed wet-shave safety razor, infringed claims of the patent. The district court denied Gillette’s motion for a preliminary injunction because it found that the claims covered only a three-bladed razor. On appeal, CAFC vacated the district court’s decision and remanded for further proceeding.

The ’777 patent claims a disposable safety razor with a group of blades, each blade placed in a particular geometric position relative to the other blades. Claim 1 describes a progressive blade exposure as follows:

A safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades with parallel sharpened edges located between the guard and cap… (emphasis added).

In determining the meaning and the scope of claim 1, the CAFC attempted to place the claim language in its proper technological and temporal context. The Court reasoned that the inventors’ statutorily-required written description in the patent itself, including the claims, the specification and the prosecution history, is the primary source of the meaning of disputed claim language.

Using this standard, CAFC determined that the language “comprising . . . a group of first, second, and third blades” can encompass the four-bladed Energizer razors. To begin, CAFC noted that the claim uses “open” claim terms “comprising” and “group of” in addition to other language to encompass subject matter beyond a razor with only three blades. Moreover, although the specification focused on blade units with three blades, the patent also disclosed a plurality of blades showing that the ‘777 patent covers razors with more than three blades. The CAFC further explained that it may be that a four-bladed razor may be less preferred embodiment, but noted that a patentee typically claims broadly enough to cover less preferred embodiments as well as more preferred embodiments, precisely to block competitors from marketing less than optimal versions of the claimed invention.

Further, CAFC also noted that the specification provided further support for interpreting claim 1 to encompass razors with more than three blades. The first sentence of the written description teaches that the invention relates to razors having a plurality of blades. Moreover, the prosecution of patents related to the ’777 patent also supports reading claim 1 as an open claim. Gillette endorsed an open interpretation of “comprising” when it argued to the European Patent Office (EPO) that a virtually identical claim in Gillette’s European counterpart to the ’777 patent would not exclude an arrangement with four or more blades. Accordingly, the CAFC concluded that the district court erred in limiting the claims of the ’777 patent to encompass razors with three blades because no statement in the ‘777 patent excludes a four-bladed razor.

In dissent, Judge Archer argued that claim 1 should not be construed as permitting a group with more than three blades simply because claim 1 contains the open transition term “comprising” in its preamble.   Judge Archer concluded that a three-bladed razor is not merely a preferred embodiment of the invention, but is the invention itself, and that the inventors did not regard a blade unit with four blades arranged in the described geometry as their invention.

Note: Dr. Baltazar Gomez is a scientific advisor at MBHB in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.

Case Questions Fundamental Questions of Patentability Requirements of Nucleic Acid Molecules

In re Fisher: EST Patentability Redux

By Donald Zuhn, Ph.D. (Patently-O Guest Author).

On Tuesday, May 3, 2005, the Federal Circuit will hear In re Fisher, in which the Court will address the utility requirement for the first time since the Patent Office set forth revised Utility Examination Guidelines in January 2001.  Specifically, in Fisher, the issue of patentable utility is being raised with respect to nucleic acid molecules.  In commenting on the possible importance of this case, Harold Wegner has described Fisher as having "the potential of being either the single most important pharmaceutical patent case in recent years – or a yawn."  Amicus briefs filed by recognized biotech and pharmaceutical companies such as Affymetrix, Eli Lilly, and Genentech in support of the Board’s decision in Ex parte Fisher suggest that it may be the former as opposed to the latter.

The particular controversy presented in Fisher can be traced back as far as 1991, when a group of NIH investigators led by J. Craig Venter sought to protect thousands of DNA sequences corresponding to portions of expressed genes.  Venter called these gene fragments expressed sequence tags, or ESTs.  Venter’s group sought to protect not only the ESTs themselves, but also the full-length sequences from which the ESTs were derived and the protein products encoded by the full-length sequences, without first determining the biological function of the encoded protein products.  In several applications filed on its ESTs, the NIH asserted a number of utilities, including the design of oligonucleotides for use in chromosomal analysis, PCR amplification, and recovering the corresponding full-length gene.  After receiving a second rejection on its initial filing, the NIH abruptly abandoned its attempts to protect the ESTs, and withdrew all of its pending EST applications from consideration.

While the withdrawal of these applications temporarily quieted the debate surrounding EST patentability, the Patent Office again stoked the fires of controversy in 1995, when it published new Utility Examination Guidelines.  The new Guidelines removed some of the obstacles to EST patenting by only requiring that an applicant assert a utility that was "specific" and "credible."  The new Guidelines had thus omitted the requirement that the assertion of utility also be "substantial," as set forth by the Supreme Court in 1966 in Brenner v. Manson.  In 1997, the Patent Office further declared that since ESTs were acknowledged to have utility apart from the full-length sequences from which they were derived, an applicant would no longer be prevented from securing protection for an EST by the failure to specify the function of the full-length sequence from which that EST was derived.

The Patent Office reversed course again in 2001 when it published revised Utility Examination Guidelines, reinstating the Brenner substantial utility prong.  The revised Guidelines now required that an applicant assert a specific and substantial utility for the claimed invention that would be considered credible by a person of ordinary skill in the art.  The Patent Office also issued Revised Interim Utility Guidelines Training Materials, which provided Examples indicating how the revised Guidelines were to be applied to thirteen different types of biochemical subject matter, including ESTs, as well as definitions of the three utility prongs.  In particular, the Training Materials defined "specific utility" as utility that is specific to the subject matter claimed, as contrasted with a general utility that would be applicable to the broad class of the invention; "substantial utility" as utility having a "real world" use; and "credible utility" as utility that is believable to a person of ordinary skill in the art based on the totality of evidence and reasoning provided.

In the appeal to be heard Tuesday, appellants Dane Fisher and Raghunath Lalgudi (employees of Monsanto Co., the real party in interest) seek to reverse the Board’s decision affirming the final rejection of a claim directed to five ESTs isolated from maize leaf tissue.  The five ESTs constitute only a small portion of the 4,013 sequences that appellants originally claimed and an even smaller portion of the 32,236 sequences that appellants disclosed in their application.  Appellants also asserted a number of utilities for the claimed ESTs in their application, including the use of the ESTs to identify polymorphisms (i.e., alternate forms, or alleles, of the claimed sequences), to design oligonucleotide probes or primers for use in isolating DNA sequences from other plants and organisms, and to measure mRNA expression levels in plant cells using microarray technology.

The Board, in Ex parte Fisher, analyzed Brenner and subsequent CCPA and CAFC decisions in In re Kirk, In re Ziegler, In re Jolles, Cross v. Iizuka, and In re Brana, and determined that "[r]ather than setting a de minimis standard, Section 101 requires a utility that is ‘substantial’," or in the words of the Brenner court, "one that provides a specific benefit in currently available form."  The Board then examined appellants’ asserted utilities and determined that none of the claimed ESTs provided a specific benefit in its currently available form.  In particular, with regard to appellants assertion that the claimed ESTs could be used to measure mRNA expression levels in plant cells using microarray technology, the Board declared that "the asserted utility of the claimed nucleic acid – as one component of an assay for monitoring gene expression – does not satisfy the utility requirement of Section 101."

In briefing the issues before the Federal Circuit, appellants argue that the Board erred in concluding that an EST is "subject to a heightened standard of utility . . . that hinges upon some undefined ‘spectrum’ of knowledge about the function of the gene that corresponds to the EST."  Appellants also contend that the Board erred in concluding that the claimed ESTs lack patentable utility "despite the undisputed existence of eight scientifically useful applications for the claimed ESTs and a commercially successful industry built upon the sale and licensing of ESTs corresponding to genes of unknown function, just like those at issue here."  In arguing against the Patent Office’s application of a "heightened standard" of utility in this case, appellants note that the Patent Office has set forth "three substantially different constructions of the utility standard over the last decade alone," and that the Board has adopted a test "so ambiguous and impracticable that even the PTO cannot articulate with any reasonable certainty when the claimed ESTs – or any other EST – might be entitled to patent protection."  Appellants also contend that the Patent Office has applied the wrong test in determining whether there is an assertion of specific utility, since "the specific utility prong only requires the existence of an identifiable benefit for the claimed invention; it does not require a benefit that is unique to the claimed invention."

The Patent Office, on the other hand, denies that appellants’ ESTs have been subjected to a heightened standard, arguing instead that appellants merely failed to assert a specific and substantial utility for the claimed ESTs that would be considered credible by a person of ordinary skill in the art. In its brief, the Patent Office often focuses on appellants’ failure to satisfy the specific utility prong, arguing, for example, that appellants’ asserted utilities "would apply not only to the over 32,000 ESTs Fisher discloses, and to the over 600,000 ESTs disclosed in Monsanto’s [six] related appeals, but also to any ESTs derived from any organism." In particular, the Patent Office counters appellants’ argument that because each EST only specifically binds to its complement, the specific sequence of each EST makes its use as a probe or primer specific, by stating that "there is no specific reason for using the EST to bind its complement," and therefore, "[t]o the extent that more sequence data could be acquired by using the ESTs as probes, that result would likely be true for any scrap of DNA derived from nature." Finally, in responding to appellants’ assertion that ESTs have a real world value as part of a multi-billion dollar industry, the Patent Office contends that "batches of ESTs of unknown significance are sold for the purpose of finding targets worthy of further development, not because the individual ESTs have any specific currently available benefit."

NOTE: This post was written by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both prosecution and litigation at MBHB LLP in Chicago. ( His article "DNA Patentability: Shutting the Door to the Utility Requirement," published in the summer 2001 issue of the John Marshall Law Review, contains a more thorough discussion of the history of the utility requirement, particularly with respect to the patentability of DNA sequences.