In re Stepan Co. (Fed. Cir. 2017)
In a split decision, the Federal Circuit has vacated the PTAB ruling that Stepan’s claims are not patentable. The claims here are directed to the use of ultra-high concentrate glyphosate and a particular surfactant to ensure “better adherence to leaves, thereby enhancing penetration.” Although the PTAB (Board) found motivation to combine elements of the prior art to form the claimed system, the Board did not fully support that PHOSITA would have a ‘reasonable expectation’ that the combination would be a success.
The decision here thus goes to the core of obviousness law:
The majority: An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). . . . Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness. (Majority opinion by Judge Moore and joined by Judge O’Malley).
The Dissent (Judge Lourie): Where, as here, there is a single prior art reference, there does not need to be a finding of reasonable expectation of success for those skilled in a particular art to make conventional modifications to the prior art and look for improvements in some parameter. See In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Majority’s Response in FN.1: The dissent suggests the PTO need not establish a reasonable expectation of success where there is a single prior art reference. We do not agree. Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.
To be clear here, the PTAB did appear to find a reasonable expectation of success. [PTAB Decision] The holding here though is that such a broad conclusory finding must also be supported by specific factual findings targeted to the patent at hand. An important element of this decision is that the majority particularly held that the lack of factual findings supporting the PTO’s conclusion meant that the agency had not even established a prima facie case of obviousness.
I have read the majority, the dissent, and the comments here. From my standpoint (obviousness at the EPO) I am puzzled why there is so much difficulty over what strikes me as a very simple set of facts.
I read that a high cloud point (ideally higher than 60°C) is desired by those skilled in the art and that 120°C is already known, suggesting that >70°C is banal. I read that the only feature in the claim that endows the claim with novelty over Pallas is the >70°C cloud point. I read that only some of the compositions covered by claim 1 deliver a cloud point >70°C, the rest coming in at <70°C.
Typically, at the USPTO, just one worked Example that delivers Result X allows an Applicant to get to issue with a claim to ALL ways of achieving Result X. The scope of such claims is not commensurate with the contribution to the art, namely the Example that works. Such claims of excessive width are an affront to common sense and therefore bring the patent system into disrepute.
Moore and O'Malley expect the PTO to generate the evidence to establish a prima facie case of obviousness on a "likelihood of success" standard. It eludes me how the PTO is to do this, hampered as it is, in not having at its disposal a fully equipped test laboratory and a budget for conducting a full test regime.
Moore and O'Malley might naively suppose that they are disciplining the PTO. Instead, they are writing a roadmap for extortionists.
Max, Agree. While some my dispute novelty and obviousness, none can dispute that the claim claims any formulation within ranges to achieve the result and the specific provides no methodology for making adjustments of the various constituents to reliably achieve the claimed result.
If obviousness was not the proper grounds, there should have been a remand all the way back to the examiner to issue a rejection under 112(a) and (b).
Thanks Ned. I suppose the “take home” for the PTO is that, in future, the PTAB will have to resolve to write its Decisions in a style fit for an intelligent non-specialist onlooker, such that high-flown jurists who are unfamiliar with, unused to, and totally without experience in the examination of patentability, can read along and accept the Board’s holdings, without getting into their heads the notion that they know better, and must reverse.
Not a bad thing then, for the health of the patent system, if we take the long view?
The “greater than 120” point is NOT reflected in the majority of comments, MaxDrei, as that was only shared most recently, after the majority of comments here.
Your finding of “banal” is itself banal.
I hope I am not the source of a 120C cloud point, as my comment regarding 120C was in jest.
The >90C part was serious and can be found in Stephan’s specification at paragraph 12 of the PPA. Though to be fair, that was with a related but distinct surfactant.
—
This case is simple.
Examiner makes rejection based on MPEP 2144.05.II which is principally based on In Re Aller.
PTAB adopt’s the examiner’s rejection, mentions In Re Aller for a secondary reason, and doesn’t clearly articulate the basis of the rejection.
Because PTAB did not hold their hands, the CAFC wildly misunderstands the rejection as prematurely forcing the applicant to prove non-obviousness.
If the Examiner/PTAB had so prematurely shifted the burden of proof, the CAFC’s response would have been reasonable. Nothing to be learned here by anyone other than PTAB.
This case should be embarassing to the CAFC that they got it wrong in two opinions.
Ben thanks. That assessment of yours is, to me, very clear and convincing.
“Moore and O’Malley expect the PTO to generate the evidence to establish a prima facie case of obviousness on a “likelihood of success” standard. It eludes me how the PTO is to do this, hampered as it is, in not having at its disposal a fully equipped test laboratory and a budget for conducting a full test regime. ”
If one needs all that, then its not obvious, is it?
I just noticed that Stephan’s specification acknowledges a glyphosate concentrate using a related surfactant with a >90C cloud point was known in the prior art.
I was going to make a snarky comment about next issuing a patent for a concentrate with a cloud point of 120C under 10 bar of pressure. But I realized that was unfair, as in contrast to Stephan’s claims, such experimentation would not be nearly as routine in this field.
Two comments about Judge Lourie’s dissent:
(1) I sympathize with the problems that Judge Lourie identifies with these claims, but his complaints (that the novelty here resides in the claimed functional effect (>70˚), and that the application disclosure does not teach one how to recognize which formulations within the specified structural genus have these functional properties, except by trial and error. That is a legitimate complaint, but the proper rejection here sounds in written description, not obviousness. When the correct rejection is written description, and the obviousness rejection is all wrong, then defending the obviousness rejection on written description grounds just makes one sound silly. Judge Lourie would have done better just to come out in the open with the written description complaint, rather than couching it all in terms of an obviousness argument that makes no sense.
(2) I really cannot agree with Judge Lourie that the cited references teach all of the structural limitations of the claim. Yes, I can find these various structural limitations, but that is just because these references constitute a sort of “Whole Earth Catalog” of glyphosate art. When the art discloses an undifferentiated welter of everything, this is no more informative to the ordinary artisan than a disclosure of nothing. I see no meaningful teaching to combine each of the various structural limitations to reach the claimed formulation, nor any suggestion that such a combination would yield a higher-than-ever-previously-achieved cloudpoint with this class of surfactants.
The fact that the applicant here achieved a higher cloudpoint than anyone had ever previously achieved with this class of surfactants strikes me as conclusive proof that there is a nonobvious invention here, and the only question is whether the applicant had properly claimed this nonobvious invention, or something more than just the nonobvious invention. Here again, however, the limitation limiting the invention to the nonobvious (>70%) conclusively establishes that the claim is limited to nonobvious subject matter.
The only question, then, is whether the applicant has described that subject matter such that the person of ordinary skill can identify and practice that subject matter. Once again, that is a basis for a §112(a) rejection, not a §103 rejection.
The only question, then, is whether the applicant has described that subject matter such that the person of ordinary skill can identify and practice that subject matter. Once again, that is a basis for a §112(a) rejection, not a §103 rejection.
Some of the “confusion” about which statutes to apply arises from various judge-made doctrines out there that permit certain types of claim “limitation” to be ignored when evaluating claims versus the prior art (“limitations” regarding intended use, for example).
Limitations relating to results achieved can also be problematic especially if the art teaches that the recited structural components in the claim are components that should be tested and combined. Identifying, say, two specific mixtures that work to achieve the “non-obvious result” recited in the claim and then claiming a far broader range of mixtures and reciting the non-obvious result can sometimes get the patent out of the office. But it’s a patent with problems. Expensive problems, in some cases.
Identifying, say, two specific mixtures that work to achieve the “non-obvious result” recited in the claim and then claiming a far broader range of mixtures and reciting the non-obvious result can sometimes get the patent out of the office. But it’s a patent with problems. Expensive problems, in some cases.
I agree 100%. A functional limitation can often get the patent across the §103 hurdle, but that is not to say that it is a good strategy. In fact, I question whether such a strategy really should not get the patent to allowance. To my mind, one resolves the §103 rejection by provoking a §112 rejection. Unfortunately, it does not appear that the PTAB thought to make the §112 rejection here, and the CAFC simply has no power to make such a rejection.
In re Chudik CAFC opinion published today:
The patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”) Thus, Dr. Chudik’s contention that his apparatus will be used in a humeral, as opposed to a glenoid, implant is not a patentable distinction
This “well settled’ law applies to any composition or system claim, not just “apparatus” claims.
It applies in context – and NOT as the type of trying to make an optional claim format into a non-optional claim format that you are attempting to do.
Another way ( of course) of looking at this is with the Inherency Doctrine.
Inherency is a doctrine for weaponizing the prior art and can be used to “import” unrecited structural limitations into the prior art (not just “results” and “statements of purpose/use” and functional limitations).
It applies in context
True of everything.
NOT as the type of trying to make an optional claim format into a non-optional claim format that you are attempting to do.
I’m not “attempting” to do anything. I’m just telling everyone what has already been done. It’s settled law.
Nobody knows what you’re talking about.
“I’m not “attempting” to do anything. I’m just telling everyone what has already been done. It’s settled law.
Nobody knows what you’re talking about.”
Pure B$ – and we both know it.
Is there an exception for medical uses?
What is the status of a new use for an old drug ?
There is no exception to §§102/103 for medical uses. A new use of an old drug can be patentable if the new use is useful, novel, and nonobvious. The question is whether the claim will be worth anything, however.
If I discover that some very precise serum concentration of aspirin (for example, 150 to 200 µg/dL) can cure ringworm, I might be able to get a patent for the method (e.g., “a method of treating ringworm in a patient in need thereof, the method comprising administering a dose of acetylsalicylic acid to the patient to achieve a concentration of 150 µg/dL to 200 µg/dL of acetylsalicylic acid in the patient’s blood”).
Mere sales of aspirin will not infringe this claim, however. The usual way that such a claim is infringed is if a generic drug manufacturer writes on its label that one should administer aspirin at this concentration to treat ringworm. That constitutes infringement by inducement under §271(b). However, if the aspirin seller does not write this message on the label (or in the promotional materials, or some such), then there is no inducement.
As such, second medical use claims tend not to be very useful in the context of over-the-counter drugs, because there is no mechanism to make the drug-seller write an inducing message on its product, and absent such a message you have no cause of action for infringement, except against the end-user patient, who is hard to identify and not worth suing even if you do.
Second medical use claims are frequently valuable in the context of prescription drugs, however, because the FDA will frequently require generic drugs to copy the branded drug’s label verbatim. If the branded drug’s label says “use this product to treat X,” then it is inducement to infringe when the generic copies that label.
MS Is there an exception for medical uses?
What Greg said is correct but I want to make clear that there is legal distinction in the US between composition/apparatus/system claims reciting “intended uses” as limitations (on one hand) versus method claims describing the actual physical transformative steps that are “used”.
The new use is patentable. As is a new use of an old machine or a new use of an old composition of matter. Of course, software is a component of the machine, so new software makes a new machine, just as a new gear makes a new machine.
Bottom line. Federal Circuit refuses to follow KSR in cases involving the chemical arts. Junk chemical arts patents abound. It’s disgraceful.
Could not agree more. The claim is to a result.
Laurie’s method of applying the law is as follows. He reads the claim and determines whether he thinks it is patent worthy using his hindsight reasoning and set of beliefs about how technology works, which are sadly lacking.
He then constructs arguments to back-up his flash judgment.
Night, regardless how people claim they do it, this is always how everybody reasons. Not just Judge Lourie. It’s not a fair criticism you’re making. You do it just as much yourself.
They cannot help it. That’s the way the human brain works. You already know Kahnemann’s Thinking Fast, Thinking Slow. It inspired Jonathan Haidt’s The Righteous Mind (and its Elephant and Rider metaphor) and, after that, there’s a Paper applying those academic research findings to the everyday work of jurists.
It’s trite, I know, but we still today enjoy much the same quick-thinking brain that we already had, 100,000 years ago, when struggling to stay alive on the African Veldt. In an instant, even today, one’s elephant brain simply cannot help itself but take the Friend or Foe decision, and then act accordingly.
“It’s not a fair criticism”
Pure B$.
Legal thinking is supposed to be different – supposed to be critical thinking and is supposed to NOT be that type of mere reflex.
To say that “oh well, it is just natural” is the antithesis to critical thinking and has NO place in the legal world.
We choose differently.
We aim differently.
We set the standard differently.
Ned: The claim is to a result.
Nice to see people thinking about this stuff. Yes, functional claiming at the point of novelty is a real problem. It’s less of a problem in the chem/bio arts, of course, than in the logic arts where the claims and disclosure disclose nothing but vapor.
“than in the logic arts”
What is a “logic art,” and how is that copyright project coming along on “logic”…?
Your prevarications are old, trite and exceedingly meaningless.
Let’s do the Malcolm Sniff on claim 1:
1. An ultra-high load, aqueous glyphosate salt
a. water;
b. glyphosate salt in solution in the water in an amount
greater than about 39 weight percent of acid equivalent,…
said glyphosate salt being selected from the group consisting of
the isopropylamine salt of glyphosate,
the potassium salt of glyphosate,
mixtures of the isopropylamine salt and the potassium salt of
glyphosate and
mixtures of the potassium salt and the ammonium salt of glyphosate;
c. a surfactant system in an amount
ranging from about 1 to about 20 weight percent…
comprising:
i. from about 10 to about 60 weight percent,…
of one or more dialkoxylated alkylamines;
ii. from about 5 to about 30 weight percent,…
of one or more water miscible solubilizers; and
iii. from about 30 to about 75weight percent,…
of one or more amine oxides;
said concentrate having a cloud point above at least 70ºC.
or no cloud point when the concentrate is heated to its boiling point.
What is the single “objective physical structure” of the invention?
Malcolm’s “sniff test of objective physical structure demands A single objective physical structure. You have several “moving parts*** here,” and the invention finishes being claimed by the result about cloud point (even throwing in a function of heating “whatever” it is to its boiling point).
*** you are actually covering a fairly wide range of different “objective physical structures,” tied together with a desired result, and that desired result based on words sounding in function.
But “chemical” is enough to close Malcolm’s eyes and snuff the sniff. Does that leave a bad taste in your mouth? I hear you. I feel the same.
What is the single “objective physical structure” of the invention?
Is that an argument?
You know full well that it is YOUR argument.
Even if your “Billy” comment is wiped out, your “softer” version here still says nothing.
You need to take up the challenge here MM. Anon has challenged directly on a substantive point that you have made thousands of times.
Please provide a substantive answer.
What Malcolm needs is a little more intensive than taking up a challenge of him squaring his own “objective physical structure” mantra for this chemical arts case without looking like a complete d00fus.
Be that as it may though, and quite apart from any (all too easily seen) running away by Malcolm, the dialogue can be fruitful by noting what it is that IS happening with the direct claim language here that place this claim outside of the single objective physical structure meme that Malcolm so eagerly embraces (in his attacks on other claims).
Of course, we both know that the [shocking] concept at play here is “the ladders of abstraction” [notwithstanding the “A” word, this concept is a good thing].
Claims – in all art fields – employ the technique of ladders of abstraction.
That is, any worthwhile claim (and any claim above a painfully exacting picture claim).
Even – as noted here – claims in the art field of chemical compositions.
Instead of simply recognizing this truism, we have the prevaricators and the conflationists expounding as if ladders of abstraction always merely have two rungs on the ladder, and any attempt at reaching for a next rung is somehow a “bad” thing.
This too – in particular – highlights the personal cognitive dissonance that runs rampant in Malcolm’s perpetual parade of propaganda (as you note).
In most all cases, the heart of anti-software (or anti-business method) patent “arguments” can be critically examined and found to be merely anti-patent arguments.
This is because the law – as written by Congress – is agnostic to the various art fields and areas of innovation – as it should be. Those seeking to curtail innovation in particular art fields then must obfuscate and prevaricate in order to draw legal distinctions not there.
MM never engages in substantive debate when in the field of his propaganda.
When is he not in his field of propaganda?
Pardon Potential (re)Post…
Of course, we both know that the [shocking] concept at play here is “the ladders of abstraction” [notwithstanding the “A” word, this concept is a good thing].
Claims – in all art fields – employ the technique of ladders of abstraction.
That is, any worthwhile claim (and any claim above a painfully exacting picture claim).
Even – as noted here – claims in the art field of chemical compositions.
Instead of simply recognizing this truism, we have the prevaricators and the conflationists expounding as if ladders of abstraction always merely have two rungs on the ladder, and any attempt at reaching for a next rung is somehow a “bad” thing.
This too – in particular – highlights the personal cognitive dissonance that runs rampant in Malcolm’s perpetual parade of pr0paganda (as you note).
In most all cases, the heart of anti-software (or anti-business method) patent “arguments” can be critically examined and found to be merely anti-patent arguments.
This is because the law – as written by Congress – is agn0st1c to the various art fields and areas of innovation – as it should be. Those seeking to curtail innovation in particular art fields then must obfuscate and prevaricate in order to draw legal distinctions not there.
Third try…. (the “Don’t have a dialogue” filter may still be tripped from yesterday)
Of course, we both know that the [shocking] concept at play here is “the ladders of abstraction” [notwithstanding the “A” word, this concept is a good thing].
Claims – in all art fields – employ the technique of ladders of abstraction.
That is, any worthwhile claim (and any claim above a painfully exacting picture claim).
Even – as noted here – claims in the art field of chemical compositions.
Instead of simply recognizing this truism, we have the prevar1cat0rs and the conflationists expounding as if ladders of abstraction always merely have two rungs on the ladder, and any attempt at reaching for a next rung is somehow a “bad” thing.
This too – in particular – highlights the personal cognitive dissonance that runs rampant in Malcolm’s perpetual parade of pr0paganda (as you note).
In most all cases, the heart of anti-software (or anti-business method) patent “arguments” can be critically examined and found to be merely anti-patent arguments.
This is because the law – as written by Congress – is agn0st1c to the various art fields and areas of innovation – as it should be. Those seeking to curtail innovation in particular art fields then must obfuscate and prevaricate in order to draw legal distinctions not there.
P.S. This claim 1 was the only independent claim of the 31 claims rejected.
Also note that this was a Board appeal decision on an ex parte application examination, not an IPR, so how could the Board itself, or even the ex parte examiner, come up with such required adverse-evidence proof “that a skilled artisan would have been motivated to combine the teachings of the prior art .. and that the skilled artisan would have had a reasonable expectation of success in doing so?” Thus this application will undoubtedly issue with all claims intact.
However, if someone is sued on the patent, this decision practically invites whomever is sued to file an IPR petition supplying that missing adverse-evidence via declarations and other patent or publication references.
>>how could the Board itself, or even the ex parte examiner, come up with such required adverse-evidence proof “that a skilled artisan would have been motivated to combine the teachings of the prior art .. and that the skilled artisan would have had a reasonable expectation of success in doing so?”
I suspect a much more persuasive rationale could have been crafted by the Examiner using the Pallis reference, if the Examiner knew that such a rationale was necessary. Instead the Examiner provided a rejection based on the the obviousness of routine optimization in the context of In Re Aller (and MPEP 2144.05.II).
The point being, these claims could be dealt with by ex parte examination.
Trump nominated Andrei Lancu for USPTO Director.
MM will be pis sed!
MM will be pis sed
I’m happy to “wait and see” for now. Yes, my expectations are low.
And… one more comment — those criticizing Judge Lourie’s dissent should be sure to read it. Including the case caption, it’s barely over three pages, straightforward, and not the sort of controversial missive one might expect after reading the majority’s footnote.
People should read “Judge” Lourie’s dissent because it includes ad hominem attacks on the patentee. The problem with Lourie is that he thinks he can use hindsight reasoning and just look at an invention and decide on his own whether it is patentable. He has no concern about applying patent laws.
A person that is clearly unfit to be a judge on CAFC.
And, dcl, if you bother actually reading what he writes and actually listening to him, you will see time and again that Laurie just looks at the invention and uses hindsight reasoning to form his own private opinion about an invention. And, then he just patches together some lame argument to justify his private opinion.
Read it dcl, and I cannot agree with you.
While I do appreciate Judge Lourie’s attempt at discussing the point of the composition claim attempting to claim a result, his “reading” of claim limitations is abysmmal. Just because a claim limitation sound in function does NOT mean that THAT claim limitation is not there (Lourie attempts to read the claim WITHOUT that final limitation). To wit, Lourie’s “In that case it could be argued that the achievement
of a 70ºC cloud point was a special goal of the invention,
which made its achievement nonobvious and important,” misses the point that the limitationin the claim (functional, or result as it may be) DID expressly make that ’70ºC cloud point’ a special goal of the invention.
Judge Lourie evidences a type of judging in that he know the result he wants, and simply speaks in order to achieve that result.
Also, I find (scientific) fault with the way that an upper limit type of limitation is being treated.
Having something “greater than 60” is (or can be) an open invitation to injection of science fiction that would have no place in a legal obviousness analysis.
(yes, I realize that I am treading into the domain of “art for obviousness does not need to be enabled”- but maybe it should be).
Finally, What Lourie would do would ALLOW an admittedly flawed decision to end the story for the patentee. The majority here – based on the actual legal points and arguments in front of it – remands BACK TO the lower forum.
That is simply the better path.
I case no one’s said it yet, I appreciate the inspirational poster
My first step is believing that you do appreciate the poster.
Beyond that, I am not inspired to take a second step.
😉
“This is Exhibit A as to why I think that the SCotUS’ should be stripped of jurisdiction to review patent cases.”
Amen.
The only thing more awesome is 80+ year old judges who are trained in chemical arts opining over comp-sci inventions.
One of the interesting things I saw in reading the English cases in the run up to Oil States is that they viewed differences from the prior art in terms of utility. Did the difference cause an improvement. If the alteration provided little or no difference, the difference was deemed immaterial and could not support a finding of newness.
I think this translates well into obviousness law. At a minimum, the change must bring new or improved utility. If it does, then was that change known to the prior art such that it could be expected?
Actually, this is just Hotchkiss v. Greenwood. But the way the English cases treated it, it seemed a whole lot clearer and simpler.
At a minimum, the change must bring new or improved utility… Actually, this is just Hotchkiss v. Greenwood.
That sounds right to me. If the reason that the change from the prior art is not obvious is because it makes the product worse in every possible way, then that is not enough to make the claim patentable.
The important caveat to this point, however, is that one can achieve patentability that effects an improvement in one aspect of the product, but a worsening in another aspect. The important part—to the patentability assessment at least—is that the improvement was not expected (i.e., obvious) ex ante, regardless of whether the corresponding worsening might or might not have been expected.
This does NOT translate well. As anyone with any background whatsoever in the history of innovation can tell you.
The misnomer of “better,” as in some linear advance, is simply not how innovation occurs (or can occur).
As anyone with any background whatsoever in the history of innovation can tell you
As one who has spent his entire adult life innovating, I’m struggling to think of a patent-worthy example of anything new that was worse in every possible respect compared to what existed before.
Even if such things existed, why on earth would we choose to “promote progress” by rewarding the people who create worse things?
Sometimes you have to put the patent crack pipe down, “anon.” I know it’s hard for you.
“Every possible” is a lovely strawman.
Why don’t you actually inform yourself as to the relative seemingly backward steps that disruptive innovation so often exhibits.
Perhaps the lesser thing is lighter, less complex, more easily manufactured and less expensive, and has broader industrial appeal. I have dealt with such a situation in aerospace applications utilizing graphite composites.
<iPerhaps the lesser thing is lighter, less complex, more easily manufactured and less expensive
Those would qualify as improvements, kids (although the “less expensive” is an abstraction absent some context — charging less for something is not innovative).
Please try to keep up.
Ned, thanks for that. I observe in reply Englishman Paul Cole’s book has it that patentable matter corresponds to “A difference that makes a difference”. The “difference” is the novelty. The difference that said difference makes is the measure of non-obviousness/utility/eligibility, call it what you like.
When the EPO was being set up in 1977, patentability was structured by an Englishman called Cadman. The EPO had it then (and still does today) that a patentable invention is to be equated to the solution of an objective technical problem. Of course, that which solves the problem is the same thing as “the difference that makes a difference”.
Patentability, actually, is much the same to judges everywhere, it seems.
link to ipkitten.blogspot.de
Ned, a Link for you, on technical effects and the difficulty of assessing whether they are real.
To the IPKat blog, revealing how deceitful a pharma corporation can be, about utility, in order to get to issue on a claim to a variant of a molecule. It seems that one files comparative data at the PTO, in support of assertions of an improved pharmaceutical effect, even though you know there really isn’t any such effect.
How does the PTO (and those who establish the PTO as a patent granting authority) guard against such corporate deceit? IPR perhaps?
“How does the PTO (and those who establish the PTO as a patent granting authority) guard against such corporate deceit? IPR perhaps?”
Generally they don’t if it is filed as x y z evidence iirc. Though post grant proceedings do help, along with court cases.
Indeed. So I wonder, how many invalid claims does the USPTO issue each year, how much does it cost to put their validity in issue, and why must the standard of proof to knock out such deceitful monopolies by “clear and convincing”?
It is almost as if a “strong” patent system is a tipped-scales corporate conspiracy against the long-suffering public.
MaxDrei,
LONG have you had a bug up your arse about the clear and convincing level of the presumption of validity in the US sovereign.
Your “corporate conspiracy against the long-suffering public” is but a thin veneer for being AGAINST inventors. It is NOT the public that suffers from strong patents. The public benefits.
It is the Big Corp’s that suffer from strong patents.
I agree, the PTO does not have the means to examine the utility requirement under a preponderance of evidence. And without utility, a disclosure has no more value to the public than a random idea generator.
“deceitful a pharma corporation can be, about utility… files comparative data at the PTO, in support of assertions of an improved pharmaceutical effect, even though you know there really isn’t any such effect.”
I don’t get that – at all – from IPKat’s write-up. The complaint about deceit is in filing and obtaining a patent to the alpha form of the crystal despite apparently knowing that their old process also produced a certain amount the alpha crystal, making Sevier Lab’s own previous sales prior art.
Max, in addition to the right of every defendant to raise fraud in the patent office, if a patent is enforced knowing that it was fraudulently procured and it creates or maintains an unlawful monopoly in some field, and one could argue that a particular drug might be a field, then there is an antitrust action as well that involves treble damages and attorneys fees.
Any party lying to the patent office to obtain a patent is not only putting their client at grave risk in United States, they are putting their careers in jeopardy.
But then we have this very case where the patentee is claiming a result, and not the means or methods by which it is obtained. It is incredible that even today Federal Circuit is not implementing Supreme Court case law in this field. Perhaps Congress has to act and declare functional claiming illegal and criminal, opening the door for Qui Tam actions to enforce. Now would not that be something?
Ned – you still over react to this “functional claiming” thing – and you still have not addressed the difference between Vast Middle Ground (Prof. Crouch’s coined term) and PURE functional claiming.
All your “umbrage” until you clarify these things is all sound and fury, signifying nothing.
Anon, why do you do this? Supreme Court made clear that that which is functional has to be at the exact point of novelty.
In other words, it is no vice to define elements functionally, or to use functional language in a claim to help explain what something is, but the novelty cannot be in the functional language.
In this case, the only thing new was a result. We have a claim to various constituents with ranges. That identical subject matter was disclosed in the prior art. If there was some combination of constituents and ranges thereof that produced the claimed result, that was not claimed. That is why the claim is invalid.
You still trying to peddle pre-1952 SC cases – and ignore that the Act of 1952 happened?
anon, point conceded. The we ought to be clear that any claim that is F at the PON or to a result invokes 112(f).
“we ought to be clear that any claim that is F at the PON or to a result invokes 112(f).”
You still have not provided an explanation of the difference between PURE functional claiming and the Prof. Crouch coined term of Vast Middle Ground.
To that point then, your instant attempt to “invoke 112(f)” remains a failure, and is merely you holding to a view that is simply not in accord with the actual law as written by Congress.
You remain clutching a panacea that is just not there.
Ned, my point is that all there is on the public file at the PTO is some comparative data. How does one prove from that data, beyond doubt, that the patent was obtained by fraud?
In ordinary civil proceedings, governed by a “more likely than not” evidential standard, the Opponent files its own comparative data and there follows an exploration of which data carries more weight.
For the life of me, I cannot understand why a jurisdiction would load the scales in favour of the party applying for a patent. The Opponent should have a sporting chance of getting to a “more likely than not” watershed, surely.