What is patentable? Perhaps I was too optimistic in my earlier “Prometheus bound (or at least distinguished)” post.
The May 10 Federal Circuit court decision, “CLS Bank v. Alice Corporation” shows that the Federal Circuit is unfortunately still spinning its wheels with regards to determining basic questions about what is patent eligible.
The good news is that the decision’s various logical problems, and the logical problems with the underlying Supreme Court decisions, are being widely publicized. Indeed interest in this decision was so high that the Federal Circuit Court servers crashed under the load of everyone trying to download the decision at once!
If you are interested in seeing the present state of the art in regards to cutting-edge legal confusion, you can download the Federal Circuit decision at:
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.