As mentioned in class this week, everything that is made by man can be patented. However, a product that is similar to what exists in nature cannot (i.e. an exact duplicate of nature). The process that allows you to get more harvest than naturally possible, on the other hand, can be patented. There are many other examples which are difficult to classify into one of the two categories though. Thus, how do we know which claims relating to nature can or cannot be patented?
Just today, USPTO released a memorandum to the Patent Examining Corps listing some guidelines for analysing claims involving "laws of nature/natural principles, natural phenomena, and/or natural products". Dennis Crouch on Patently-O points out that this is important, as there is currently a separation between the examiners, the judges, and the jury, who have technical training, legal training, and neither respectively. The guidelines were listed in lieu of the changes in law from a tried case, and closes the gap between the examiners and judges, as examiners might not be previously informed.
Following this memorandum, it is likely more are to come given the accelerating number of patent lawsuits and, in particular, many regarding validity of patents. While this may further complicate the role of the examiners as they have more different sets of guidelines for different categories of patent applications to follow, it may also aid in rejecting more "bad" patents.
Sources:
http://patentlyo.com/patent/2014/03/eligibility-guidelines-phenomena.html
http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf
http://www.uspto.gov/patents/law/exam/myriad-mayo_qrs.pdf
Just today, USPTO released a memorandum to the Patent Examining Corps listing some guidelines for analysing claims involving "laws of nature/natural principles, natural phenomena, and/or natural products". Dennis Crouch on Patently-O points out that this is important, as there is currently a separation between the examiners, the judges, and the jury, who have technical training, legal training, and neither respectively. The guidelines were listed in lieu of the changes in law from a tried case, and closes the gap between the examiners and judges, as examiners might not be previously informed.
Following this memorandum, it is likely more are to come given the accelerating number of patent lawsuits and, in particular, many regarding validity of patents. While this may further complicate the role of the examiners as they have more different sets of guidelines for different categories of patent applications to follow, it may also aid in rejecting more "bad" patents.
Sources:
http://patentlyo.com/patent/2014/03/eligibility-guidelines-phenomena.html
http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf
http://www.uspto.gov/patents/law/exam/myriad-mayo_qrs.pdf
Hi Jun, I think you raise a very interesting point about what can and cannot be patented regarding the U.S. Patent Law's treatment of manmade and natural things. It reminded me of an article I came across last year: http://www.wired.co.uk/news/archive/2013-04/16/gene-patenting. This gives a compelling example whereby a biotech lab isolated breast cancer genes: while this does not alter the state of the natural genes, it creates a new function for them, that is testing for breast cancer- this method could potentially allow that company to monopolize breast cancer diagnosis. The courts did not allow patenting of the isolated genes, using the analogy that if we find a new way of making earrings out of gold, it does not entitle us to patent gold. Thanks for hearing my thoughts.
ReplyDeleteHi Melissa, thanks for sharing the article! I agree that an extracted gene, where there is no additional work done to manipulate the gene formation, should not be allowed to be patented. Even without patenting the gene, Myriad is still able to conduct various types of breast cancer cell tests, and it is pretty unlikely that any other companies who research over the said gene would end up with the exact same procedure or process leading to a cure.
DeleteFollowing that, it makes sense that any natural product of nature without any modifications should not be patentable. It ends up inhibiting technological innovation altogether because other companies are unable to even find any way to go around the problem.
I've briefly looked through the guideline, but found it rather general when it comes to some specific application like software (things that involved "abstract idea"). Though someone pointed out that there will be experts to help out clarify the validity of claims. Either way, it is still a good step to make the patenting eligibility more transparent than it was, and save resource for invalidating ineligible patent later on.
ReplyDeleteHow great, it seems that you and I wrote about a similar USPTO update this week! The whole idea of rejecting non-manmade ideas and technologies seems like a great first step – regardless of how vague it may seem – towards greater efficiency within the PTO.
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