7 ms·

High Court draws line on attempt to patent law of nature through artful drafting

46 points by grellas 15y ago

lutorm 15y ago
That's one of the most sane conclusions to a patent case I've seen in a long while. It's always baffled me how you can patent naturally occurring DNA just because you figured out how to sequence it. By that standard, Galileo could have patented the craters on the Moon and the Galilean satellites. And whoever invented the microscope could have patented the cell. Columbus could have patented America. A discovery is not an invention.
- drucken 15y ago
  I'm grateful for this case, if for no other reason, that wherever the US finally, eventually draws a line in ridiculousness with regards to "Intellectual Property", the rest of the world seems to have no choice but to adopt it as the least common denominator. This is particularly so for the UK and other Anglo countries. So, a good decision, indeed.
- thyrsus 15y ago
  My understanding w.r.t. DNA is that naturally occurring DNA is full of "junk" sequences that do nothing relevant to the proteins of interest (whether they do anything else is an open question). The patented sequences omit the "junk" DNA. Whether these omissions of "junk" DNA raise the matter to the level patentable material is subject to differing opinion, but the courts have ruled.
- Daniel_Newby 15y ago
  This is an insane decision. The drug in question is very niche, so performance data is scant. Deciding on a therapeutic window is a creative judgement call, not an observation of a fact of nature. Moreover the choice of number of molecules per red blood cell is unconventional and therefore also creative.
  - deleted 15y ago
    [deleted]
  - andybak 15y ago
    Do either of those facts merit patentability? creative != novel and non-obvious. It's a much lower bar. And that is without considering the 'machine and transformation' side of things.
moldbug 15y ago
It's well worth reading patent courtesan Gene Quinn as his head explodes: How long will it take the Federal Circuit to overrule this inexplicable nonsense? The novice reader may find that question to be ignorant, since the Supreme Court is the highest court of the United States. Those well acquainted with the industry know that the Supreme Court is not the final word on patentability, and while the claims at issue in this particular case are unfortunately lost, the Federal Circuit will work to moderate (and eventually overturn) this embarrassing display by the Supreme Court. This will eventually be accomplished the same as it was after the Supreme Court definitively ruled software is not patentable in Gottschalk v. Benson, and the same as the ruling in KSR v. Teleflex will be overruled. I have taken issue with Chief Judge Rader’s statements that nothing has changed in Federal Circuit jurisprudence as a result of KSR, which is not technically true. What is true, however, is that the Federal Circuit continues to refine the KSR “common sense test,” narrowing the applicability in case after case and tightening the ability for “common sense” to be used against an application. We are almost 5 years post KSR and there is still a lot of work left to be done by the Federal Circuit to finally overrule the Supreme Court’s KSR decision. It took almost 10 years to overrule Gottschalk v. Benson, so we are likely in for a decade of work to moderate the nonsense thrust upon the industry this morning. Indeed, Breyer’s decision is the most intellectually dishonest decision I have ever read, which is saying a lot given the utter contemptuous understanding of patent law displayed by the Supreme Court over the years. It is truly troubling that all 9 of the Justices concurred in what history will regard as one of the worst decisions in the patent space EVER! Yes, Congress will be asked to step in and rectify this absurd ruling, and they should. Knowing how the legislative branch operates I cringe at the thought of Congress coming to the rescue. The only thing that gives me solace is that the industries summarily executed this morning have an A+ lobbying game, which in Washington, DC means everything. (http://www.ipwatchdog.com/2012/03/20/supreme-court-mayo-v-prometheus/id=22920/ http://www.ipwatchdog.com/2012/03/20/supreme-court-mayo-v-pr...) The worst of it is: Quinn is exactly right (about the Federal Circuit, in every way an organ of the patent lobby). The Supreme Court is simply not in control of our foul, meretricious patent bar. (Of course, if they wanted to start getting in control of it, they're doing it right.)
- nl 15y ago
  That link just made my head explode: Did all nine of the Supreme Court Justices just conflate patent eligibility with novelty and non-obviousness? Yes they did! But it gets worse — they explicitly admitted doing so! and The Supreme Court also further specifically ignored the Government’s objective, reasonable and until today correct assertion that any step beyond a statement of a law of nature transforms the claim into one that displays patent eligible subject matter I had to double-check if this was some kind of parody site. Perhaps this could be an extension to Poe's Law?

46 points by grellas 15y ago

That's one of the most sane conclusions to a patent case I've seen in a long while. It's always baffled me how you can patent naturally occurring DNA just because you figured out how to sequence it. By that standard, Galileo could have patented the craters on the Moon and the Galilean satellites. And whoever invented the microscope could have patented the cell. Columbus could have patented America. A discovery is not an invention.

drucken 15y ago
I'm grateful for this case, if for no other reason, that wherever the US finally, eventually draws a line in ridiculousness with regards to "Intellectual Property", the rest of the world seems to have no choice but to adopt it as the least common denominator. This is particularly so for the UK and other Anglo countries. So, a good decision, indeed.
thyrsus 15y ago
My understanding w.r.t. DNA is that naturally occurring DNA is full of "junk" sequences that do nothing relevant to the proteins of interest (whether they do anything else is an open question). The patented sequences omit the "junk" DNA. Whether these omissions of "junk" DNA raise the matter to the level patentable material is subject to differing opinion, but the courts have ruled.
Daniel_Newby 15y ago
This is an insane decision. The drug in question is very niche, so performance data is scant. Deciding on a therapeutic window is a creative judgement call, not an observation of a fact of nature. Moreover the choice of number of molecules per red blood cell is unconventional and therefore also creative.
- deleted 15y ago
  [deleted]
- andybak 15y ago
  Do either of those facts merit patentability? creative != novel and non-obvious. It's a much lower bar. And that is without considering the 'machine and transformation' side of things.

moldbug 15y ago

It's well worth reading patent courtesan Gene Quinn as his head explodes: How long will it take the Federal Circuit to overrule this inexplicable nonsense? The novice reader may find that question to be ignorant, since the Supreme Court is the highest court of the United States. Those well acquainted with the industry know that the Supreme Court is not the final word on patentability, and while the claims at issue in this particular case are unfortunately lost, the Federal Circuit will work to moderate (and eventually overturn) this embarrassing display by the Supreme Court. This will eventually be accomplished the same as it was after the Supreme Court definitively ruled software is not patentable in Gottschalk v. Benson, and the same as the ruling in KSR v. Teleflex will be overruled. I have taken issue with Chief Judge Rader’s statements that nothing has changed in Federal Circuit jurisprudence as a result of KSR, which is not technically true. What is true, however, is that the Federal Circuit continues to refine the KSR “common sense test,” narrowing the applicability in case after case and tightening the ability for “common sense” to be used against an application. We are almost 5 years post KSR and there is still a lot of work left to be done by the Federal Circuit to finally overrule the Supreme Court’s KSR decision. It took almost 10 years to overrule Gottschalk v. Benson, so we are likely in for a decade of work to moderate the nonsense thrust upon the industry this morning. Indeed, Breyer’s decision is the most intellectually dishonest decision I have ever read, which is saying a lot given the utter contemptuous understanding of patent law displayed by the Supreme Court over the years. It is truly troubling that all 9 of the Justices concurred in what history will regard as one of the worst decisions in the patent space EVER! Yes, Congress will be asked to step in and rectify this absurd ruling, and they should. Knowing how the legislative branch operates I cringe at the thought of Congress coming to the rescue. The only thing that gives me solace is that the industries summarily executed this morning have an A+ lobbying game, which in Washington, DC means everything. (http://www.ipwatchdog.com/2012/03/20/supreme-court-mayo-v-prometheus/id=22920/ http://www.ipwatchdog.com/2012/03/20/supreme-court-mayo-v-pr...) The worst of it is: Quinn is exactly right (about the Federal Circuit, in every way an organ of the patent lobby). The Supreme Court is simply not in control of our foul, meretricious patent bar. (Of course, if they wanted to start getting in control of it, they're doing it right.)

nl 15y ago
That link just made my head explode: Did all nine of the Supreme Court Justices just conflate patent eligibility with novelty and non-obviousness? Yes they did! But it gets worse — they explicitly admitted doing so! and The Supreme Court also further specifically ignored the Government’s objective, reasonable and until today correct assertion that any step beyond a statement of a law of nature transforms the claim into one that displays patent eligible subject matter I had to double-check if this was some kind of parody site. Perhaps this could be an extension to Poe's Law?