Posts Tagged “patentable subject matter”

The story of Prometheus proves that bringing good things to mankind may not always have a good payback. In case you forgot, the Greek Titan Prometheus stole fire from Zeus and gave it to us mere mortals. Zeus punished him for his crime by having him bound to a rock while a great eagle ate his liver every day only to have it grow back to be eaten again the next day. While Prometheus the Titan’s crime might have been clear, not so with Prometheus Laboratories, whose patent on certain diagnostic blood tests might or might not have been patentable.

Prometheus Labs has had its patent eaten and regrown at least twice. However, with a Supreme Court ruling it seems the cycle is finally over (at least for Prometheus). For the rest of us, the Supreme Court’s invalidity ruling for Prometheus raises significant questions about the value of investing in certain types of research activities.

To put the case in a nutshell, Prometheus discovered/observed/researched that the lowest effective dose of a particular class of drug could be determined by the level of its metabolite (the product that remains after the drug is broken down by the body) measured in the blood. Their patent claim(s) essentially said “administer the drug to a patient and determine from a blood test if the metabolite is within the desired range”. From the perspective of the Supreme Court, these claims were nothing more than a statement of a law of nature (that the body produces the metabolite in proportion to how effectively it uses the administered drug) along with the instruction to observe nature in action. And, since laws of nature are not patentable, Prometheus lost the right to keep others from selling competing test kits. Note that the test kits were not patented, just the use of the kits to guide doctors in determining the proper dosage.

This ruling is important to the rest of us because the basis for invalidity was that the invention was ruled “not patentable subject matter”. To the Supreme Court the patent was the equivalent of saying “put more wood on the fire if you’re cold, break the fire apart if you are too hot.” Basic law of nature; more fuel equals hotter fire, less fuel equals cooler fire.

But this perspective is flawed, since it presumes that coming up with the acceptable range of the measurement has no inventive, patentable value. But saying that the acceptable range has no patentable value is really an issue of obviousness – just like knowing when to throw wood on Prometheus’s gift to man is obvious. The Supreme Court said “we don’t care how hard it is to come up with the right limits to make this a medically valid test. The Constitutional directive to reward inventors and discoverers of advances to the useful arts will not be applied to tests like this“.

We all may suffer from this ruling. How many research dollars will flow into medical tests that are simple to perform but whose diagnostic value comes from knowing how to interpret the results?

The validity of Prometheus’s patent should have been determined by obviousness, not by subject matter. If measuring the single metabolite in a hundred patients was all that was needed, then maybe it’s obvious. If figuring out which metabolite to measure, out of a hundred in the blood stream, was required, well, maybe not so obvious.

How about your company – how much of your value comes from a key bit of hard won knowledge? Are you the next company to have your liver eaten?

 

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Like a vampire rising again from the grave, “business method” patents don’t want to go away without a fight.  It was just a year ago that the Court of Appeals [CAFC] ruled that Bilski’s “business method” for hedging commodities was not patentable subject matter. As much as I wished that the matter was dead, there are too many business method zombies, sucking the blood out of the patent system with their “inventions”, to let it go.

Last week the Supreme Court heard arguments in the matter of “Bilski” and it seemed to observers of the Court that Bilski may finally be dead but that the contorted CAFC reasoning may be thrown out as well. As I wrote last November (IP Directions 11/2/08), the very basis of the US patent system is the Constitutional phrase: “Congress shall have power … to promote the progress of science and useful arts…” Frankly, I doubt the founders would consider hedging risk in commodity trading part of science and the useful arts.

But the CAFC didn’t want to use such a subjective criterion in their decisions, so what is the test of process patentability? According to the Bilski decision, there is a two-part “machine-or-transformation test” for eligibility of process claims. First, eligibility may be demonstrated if a claim “is tied to a particular machine or apparatus.” Second, and alternatively, eligibility may be shown if a claim “transforms a particular article into a different state or thing.” Also note that the “tie” to a machine or apparatus must be a meaningful limitation in the claim.

I would have preferred to see methods of performing business/financial operations per se be declared unpatentable as not being part of science or the “useful arts” and damn the subjectivity torpedoes. As with “obviousness”, the courts will never produce a objective definition of an inherently subjective issue, so why try. If a patent applicant feels the patent office has inappropriately reject his or her application over a subjective issue, well, that’s why we pay the justices the big bucks – to apply their “wisdom”.

How about you – any blood-sucking business methods in your patent plans?

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While there are many problems with our current patent system, one area that I would like changed is what types of processes qualify as patentable subject matter. As we know, the patentability of software and business methods is fraught with controversy these days. I’d like to throw what I call end-user methods into the mix as well.

My inclination is to look at the purported purpose of the patent system – to reward inventors who help improve society by sharing their inventions – and see which types of processes/methods achieve that purpose. Although it’s not important in this “if I were King” exercise, I like to think this approach harkens back to the Constitutional underpinnings of our patent system, where it is written that Congress can reward inventors for the purpose of “promot[ing] the progress of science and the useful arts”.

Note that the Constitution doesn’t say anything about promoting better business decisions or controlling the actions of individuals who can, with their own heads and hands, engage in an activity.
So how do software, business methods, and end-user methods fit in?

Software: When held up to the template of “Science and the useful arts” clearly some software qualifies and some does not, just as some hardware is patentable and some is not. Thus, I put software into the patentable subject matter category and leave to the examination process what happens to individual applications.

Business Methods: To me, the idea of a “business method” patent is an abhorrence. Transacting business better, faster, cheaper, or whatever is not beneficial to society; it only helps the businessperson make more money. One-click checkout, calculating hedge fund portfolio mixes, etc. are not science nor are they part of the “useful arts” (again, keeping in mind that I am king).  Note that the question isn’t “is this a process”, “is it implemented on a machine”, or “does it transform something”? No, the question is what is the purpose of the process/method; if the purpose is to transact business then it’s not patentable in my book.

End-User Methods: As I’ve discussed in an earlier blog, end-user methods are, generally, processes that don’t “make” anything and that are often performed by the person gaining the benefit of the performance (viz., the end user).  Many of the most laughable patents of recent years are for end-user methods: the method of exercising a cat with a laser pointer and the method of swinging on a swing come to mind.

While those examples are laughable, other end-user method patents cover more serious processes, such as medical procedures. Often these latter patents are a back door way for companies to secure markets for a medical device that otherwise did not qualify for a patent.

There is one more set of “method” claims that I would severely limit. These are methods of doing X, where X is really just using an apparatus, often already claimed in the patent. These method claims are, like the medical procedure patents mentioned above, nothing more than an attempt to provide patent protection for an apparatus that might not be otherwise protected.

Key tip-off words in these claims are “providing” (a such and such piece of equipment), “collecting/recording” (data or information), and “processing” (the data). Steps such as these in a method claim are simply ways to pad out what is really intended: “a method of doing X comprising the step of operating the apparatus described in the patent”. Since that one-step method claim would never be allowed, patent attorneys game the system by breaking the operation of the apparatus down into insignificant steps. They might as well include plugging it in.

That’s what I would do if I were King. How about you?

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