Prometheus bound (or at least distinguished)

Prometheus having a bad day

Mayo v Prometheus: In an ancient Greek myth, the Titan god Prometheus is chained to a mountain by the god of blacksmiths (Hephaestus/Vulcan). Why talk about ancient Greek myths?  Because the story suggests a way out of the recent (2012) unfortunate “Mayo Collaborative Services vs. Prometheus Laboratories, Inc.” holding.

This case involved two medical diagnostics patents (6,355,623 and 6,680,302), in which SCOTUS held that patents that incorporate “laws of nature” may not be patent eligible “unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations“.

Are there any inventions that don’t operate according to natural law?  What else is a patent claim but a drafting effort designed to monopolize a particular invention?  What exactly are “additional features” and “practical assurance”?  Here the Prometheus decision provides little or no guidance.

The decision’s use of “natural law”, as well as gratuitous citation of various examples from physics as well as medicine, is unfortunate for us scientifically trained types.  This is because the three dimensional nature of the universe, the forward direction of time, and everything else about the world are all based on laws of nature!

Thus unless read narrowly, this decision would produce an unconstitutional result (it would eliminate all patents, hence violating Article 1 section 8 of the constitution).  So the ruling must be read narrowly, because the SCOTUS upholds the constitution and is never wrong, right?

This will eventually get sorted out.  The Federal Circuit (Hephaestus/Vulcan), composed of judges who actually know something about laws of nature and patents, will step in.  Their job is to clean up problems like this.  Eventually they will likely “chain” the overly expansive Prometheus holding by various subsequent lower court holdings.  They can’t totally overturn Prometheus, but they can certainly bring some sense to it by nibbling away at the interpretation.  (Note added 4-10-16 — or maybe not, they are certainly taking their time!)

As one idea, the European Patent office (EPO) makes certain classes of medical methods that are practiced on the human body unpatentable.  Perhaps the Federal Circuit might draw on the EPO for inspiration, and produce rulings that narrow the scope of the Prometheus “natural law” holding to something more akin to present EPO practice.  This would still not be totally great for Biotech, but Biotech manages to survive in Europe nonetheless.

In the meantime, damage control is also underway at the USPTO.  Their July 3, 2012 guidelines state the USPTO’s expectation that Prometheus considerations will primarily impact patents that being examined by Technology Center 1600 – Organic chemistry, drug delivery, molecular biology, biotechnology, and the like. Perhaps they have been reading the EPO rules as well.  They further advise that examiners fully examine all applications, and reject on more than just patent eligibility issues.  This at least gives the applicant a chance to amend patent claims to try to overcome occasional random Prometheus rejections.

Rospatent – International PCT patent applications just got much cheaper

Rospatent - Russian patent agency
Rospatent – Russian patent agency

Low cost PCT applications? Individual inventors and small firms on a budget may be happy to know that as of January 10, 2013, Rospatent offers a new way of filing international PCT patent applications that can save on PCT filing costs.

By treaty, all PCT patent applications must undergo international preliminary examination by an International Searching Authority (ISA).  These preliminary examinations, however, are only advisory in nature, and the resulting international search reports (ISR) generally recommend rejection of almost all patent applications anyway.  Unfortunately, ISA fees are a mandatory part of the initial PCT filing payment.

The USPTO is a recognized ISA, and charges $2080 for this service.  Other ISA that the USPTO cooperates with have included Europe (even more expensive), Australia (also a bit more expensive), and Korea (cheaper – only $1167).  As of January 10, 2013, the USPTO will also cooperate with the Russian patent office (Rospatent) as an ISA.  Rospatent’s ISA fees are a jaw dropping $217.  That’s right, this is not a typo.  They are about 10 times cheaper than the US!  Rospatent does accept English, and also corresponds in English.

What is the catch?  Rospatent is new to this, and the quality of their searches is uncertain.  Additionally, the USPTO information sheet on Rospatent states that Rospatent sends correspondence to applicants via snail mail, rather than electronically, although they do accept faxes.

Probably the biggest potential issue relates to the later national stage patent application filings.  There appears to be a higher risk that Rospatent will use non-English (e.g. Russian) citations in their search report.  Thus the applicant may in essence be trading off present lower initial PCT filing costs vs. the possibility of future higher national phase citation translation costs.  The same issues apply to using Korea and Europe as an ISA, of course.

However, for small entity applicants, who are uncertain about future national phase filings, but who wish to preserve their international options as long and as inexpensively as possible, Rospatent appears to be a viable alternative to consider.  Rospatent essentially cuts initial PCT application costs in half.  For some small entities, where the financial decision may be to use Rospatent or do no PCT fling at all, Rospatent may be quite useful.

A screenshot showing the various non-US ISA options that the USPTO now allows you to select is shown below:


Recent Note:  alas, crazy Ivan’s house of bargains is no more.  As of 2014, Rospatent raised their prices.  At the same time, the USPTO significantly dropped their PCT filing prices for small companies and individual inventors.  Thus for many US based filers, the USPTO is now quite competitive on pricing, and there is no compelling need to use Rospatent.

Track 1 Prioritized Examination

In a rush to get your patent?  Based on an analysis of statistics, the website reports that the Track 1 prioritized examination method is far and away the best way to go.  Track 1 vastly outperforms other speed-up methods (Accelerated Exam, Patent Prosecution Highway, and Petition to Make Special).  In fact, most of the Track 1 prioritized patent applications are through the process in less than a year.

Track 1 is easy to do, if expensive.  There is no requirement to do extra patent searching, and no requirement to work with foreign patent offices.  If you are an independent inventor or your company is under 500 people in size, it is simply a matter of electing Track 1 at the time of initial filing, and in addition to the regular patent application fees, paying an additional $2830 in Track 1 exam fees, processing fees, and publication fees.  It is also possible to elect Track 1 for an RCE filing as well.

The main other requirements are that the patent application have less than 4 independent claims and no more than 30 claims, which is not generally a problem for most purposes.  There are a few other rules as well – a complete application must be submitted at the time of filing, and no extensions of time on replies are allowed.  All in all, however, if you are in a rush and are willing to pay extra, it is a good option to consider.