On Friday, April 10, 2015, we held the Fourth Annual University of Missouri Patent Law Moot Court Competition. Law students wrote briefs and presented oral arguments on legal and procedural questions surrounding the patenting of compounds derived from human genes. [Discussion of the Problem]. The McKool Smith firm has sponsored the event and funded a $1,000 prize to the winning student for each of the next four years. This event is also now linked with our developing Center for Intellectual Property and Entrepreneurship.
Overall winner of the competition based upon both is Paul Jacobson who will receive the $1,000 McKool Smith prize. Honorable mention goes to Mary Albert, Micah Uptegrove, Peter Bruntrager, Justin Moody,Bhandana Katoch, Mitchell Terry, John Clizer, and Joe Morrey who each received at least one first place vote. I want to especially thank our set of excellent IP-attorney-judges who gave up their day and evening for this event as well as my Teaching Assistant and future patent attorney Marriam Lin.
The next competition will be held in the Fall of 2015.
Paul Cole said in the linked article:
Paul, the problem is that a claim to a composition covers all uses regardless that only one is disclosed. If the composition is not truly new, then the claim functionally claims all such uses and is beyond the scope of contribution.
The windmill chasing continues.
Ned, your donkey needs a rest.
Ah! The Great Denunciator chimes in once more.
Pot, meet kettle.
Of course, you glibly overlook the fact that I have supported my views with the words of Congress, the congressional record and the writings of those intimately involved with the legislative process, while you have merely bloated and spun your “versions” of Ned-IMHO wannabe law.
That’s a bit of a difference between you and I.
The problem is inherent to all chemical compound claims.
For example, a new antibiotic is marvellous for making into tablets for curing infectious disease.
However, as a filler material for sandbags for flood defence it is completely useless.
The problem has been around since I joined the profession (when dinosaurs still roamed the Earth), and I do not have a solution, nor did my colleagues at that time.
Actually, the Supreme Court has ruled a couple of time in our history that with products of nature, one can only get method of use patents. I can look them up if you would like.
Yes please, and thanks in advance!
THE WOOD-PAPER PATENT, 90 U.S. 566, 23 L. Ed. 31 (1874).
link to scholar.google.com
Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 4 S. Ct. 455, 28 L. Ed. 433 (1884).
link to scholar.google.com
Interesting decisions Ned. Many thanks.
Paul, thanks.
1. I think the court held that the claimed “composition” was not a “new” composition.
2. However, given your analysis, I can see how one can conclude that the claim was not in fact to a particular composition, but to any composition that “worked.” A functional claim.
The following paragraph from your article says it all.
“The word “an” indicates that what is being claimed is a sequence having the
desired properties and therefore excludes a library of overlapping shorter sequences each having part of the code for the whole polypeptide. The reference to DNA is arguably more than a mere place-holder for the word “means” and suffices to avoid the provisions of §112(f); compare Linear Technology v Impala, CAFC, 2004 where the word “circuit” was held to imply well-understood structure and therefore also to avoid §112(f). Beyond that, however, the claim is wholly functional since it covers all DNA sequences that code for the polypeptide and mentions no specific sequence or genus of DNA sequences. It has been suggested that sequence structure is implicit since the genetic code maps the base sequence directly to the amino acid sequence of the polypeptide and that this has been known for many decades. However this suggestion does not take account of variability through codon degeneracy (not considered in the
various opinions) which applies to 18 of the 20 amino acids in the polypeptide and to the STOP codon. A second source of variability is sequence length which could be anywhere from the 5,500 bp of the relevant cDNA to ~81,000 bp for the full-length wild-type gene. A third source of variability is mutation or natural variability within introns. As will be seen, lack of structural definition in claim 1 formed part of the chain of reasoning leading to the outcome. ”
3. I don’t have the cDNA claims, but if they are functionally stated as well, I begin to believe that such claim may as well be to any structure that produces a given result. How is this really different than the DNA claim? The only clue given by the Supreme Court is that cDNA are man made and do not occur structurally in nature — i.e., they are new within the meaning of 101.
Criminy.
Is it on purpose that we entertain such dissembling so willingly?
To wit:
Ned: “The following paragraph from your article says it all.”
Quoting Paul: “The reference to DNA is arguably more than a mere place-holder for the word “means” and suffices to avoid the provisions of §112(f);”
Let’s pause right there and unwind some spin.
First and foremost, the distinction must be made (again) that the use of terms that sound in function was made permissible under 112 in the Act of 1952 in MORE than just what is now labeled (f).
There is a subtle and pernicious spin that it is ONLY in and through (f) that a Vast Middle Ground of claims NOT purely or totally functional are permitted.
Far far far far too often the goal posts are moved FALSELY to gist away ANY structure and somehow come to the claim as ONLY being pure function.
That is simple and complete error.
Now let’s continue:
“Beyond that, however, the claim is wholly functional…”
BINGO – we have that very error here.
Sorry guys, you cannot postulate that you have structure and THEN say that, well, if you parse that structure out, THEN you have that “purely” or “totally” functional goalpost-moved discussion point.
You either DO have some (any) structure -combined with functional language – or you have NO structure and PURE or TOTAL functional language.
The very moment you move to having some structure you move to the Vast Middle Ground and the protection afforded by the Act of 1952.
This is afforded directly by the words of Congress, as noted by Federico.
This also is a foundation that needs to be understood, accepted, and integrated by the commentators if those commentators want any credibility.
If you don’t like this, may I suggest that you properly reflect in your writings that you are discussing some different law than the one written by Congress in 1952.
I sorry, folks, but does anon have any credibility left after such a post?
The “folks” schtick is old and trite.
If you have a point to raise, raise it.
If you have a question on a point I raised, ask it.
But you better be prepared to not run away from the discussion as you usually do.
Who were the volunteer judges?
That was generous of McKool Smith
Hearty congratulations on setting your students a very interesting problem. It would be quite wrong for me (or I suggest any other contributor) to express any views one way or the other on the substantive issue. However, I am confident you will have an interesting debate, and am taking this opportunity to pass on very best wishes for the occasion.
Still Paul, it would be interesting for Dennis to summarize the arguments of the contestants, especially of the winners. I assume that who was chosen the winner would have something to do with the views of the judges on the topic — as cases are won in court based on substance of the argument, not on the quality of its presentation.
Mea Culpa! I had read the posting too quickly and did not pick up that the moot had already taken place.
If you read the patent carefully, you can find the BRCA1 cDNA sequence, but that seems to be a computer reconstruction and there is no detailed description of the production and isolation of the cDNA as a real physical molecule.
It was, of course, within the skill in the art, knowing the sequence to prepare the cDNA as a physical reality. But if the patentees had done that, they had not troubled to report their experiment.
On the whole, if all that existed was a sequence in silico, I would not, as a chemically trained attorney, be inclined to give credit for work which had not been reported. So I would go for the unpatentable idea.
It is very notable that in Myriad the patentees through their attorneys waxes lyrical about the purposive breaking of chemical bonds in defined places to produce isolated genomic BRCA1. There is no report in the specification of this having been done – merely the probing of gene libraries and computer reconstruction which is not at all the same thing. Neither the dissent in the Federal Circuit not the Supreme Court was prepared to buy that bag of goods, and small blame to them.
Paul, it is interesting to see that the Supreme Court invalidated the isolated DNA claims because they interpreted the claim to the sequence that produced an effect. One would naturally ask why cDNA, which produces, I assume, the same effect, would be treated differently.
This is a good question.
@ Ned
The reason why the genomic BRCA1 claims were rejected was because they were not a composition of matter, being merely a length of a naturally occurring molecule and were not a manufacture because they did not comply with the Hartranft criteria. As to the state of knowledge of Myriad when they filed the patent see my posting on Patents4life at link to patents4life.com
The cDNA being an artificial molecule qualified as a composition of matter and foreseeably had Hartranft utility because you could do things with it, the sequence length being about 5500kb instead of about 80000 kb for the genomic material.
Eligibility of cDNA which is a new molecule and has Hartranft utility has NOTHING toi do with eligibility of genomic sequences which are fragments of old molecules and do not fall within the composition of matter definition.
The interesting problem in Denis’ question (which I think is excellent) is what is the status of a genomic sequence that has been reconstructed in silico but has not been described as a chemical entity? There you are in the ideas realm, arguably
Reconstructed in silico…
Idea realm….
Because THINGS in silico are….
….ideas?
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