Wednesday, March 21, 2012
In a unanimous decision, the United States
Supreme Court yesterday issued its opinion in Mayo Collaborative Services
v. Prometheus Laboratories. In an opinion authored by Justice Breyer, the Court found that the patent
claims at issue were not patent eligible and reversed the Court of Appeals. We first wrote about this case
on December 13, 2011. Briefly, the case addresses whether there is a right to
gain patent monopoly over a medical diagnostic technique, or more generally, whether a patentee can monopolize basic, natural
biological relationships claimed as a diagnostic procedure. (For a more detailed discussion of the
background and pre-Supreme Court procedure, see our December 31, 2012 blog entry.) The Court held no, there
is no such right.
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for this author, really brought nothing new to light and was, for all practical purposes, a fact specific
case that really shed no new light on the scope of the patent law and where natural phenomenon fit in it. Instead
of taking the opportunity to clarify the issue of patentability of inventions containing natural phenomenon, the Court merely
rehashed prior cases and found that the patents at issue fit somewhere between Diamond
v. Diehr (patent found claim eligible- “‘a process is not unpatentable
simply because it contains a law of nature or a mathematical algorithm.’”) and Parker v. Flook (patent
found claim ineligible- provid[ing] a[n unpatentable] formula for computing an updated alarm limit). The
Court found that the Prometheous patent were more similar to the Flook patent.
The Court also reiterated, as it had in remanding this
case back to the Court of Appeals after hearing it the first time, that the Bilski, “machine or transformation”
test was not an absolute but merely one marker of patentability. The Court then re-stated that is has repeatedly emphasized a
concern that patent law not inhibit future discovery by improperly tying up the use of laws of nature and the like, and there
is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when
a patented process is no more than a general instruction to “apply the natural law,” or otherwise forecloses
more future invention than the underlying discovery could reasonably justify.
Perhaps the most instructive sections of the opinion
were when the Court: (1) appeared to say, indirectly, that Prometheous claimed to broadly: [“o]ne problem with
[process] patents is that the more abstractly their claims are stated, the more difficult it is to determine precisely what
they cover.” (quoting C. Bohannan & H. Hovenkamp, Creation without Restraint: Promoting Liberty and Rivalry in Innovation
112 (2012) and (2) admitted “Courts and judges are not institutionally well suited to making the kinds of judgments
needed to distinguish among differ-ent laws of nature. And so the cases have endorsed a bright-line prohibition against patenting
laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying
“building-block” concern” (in other words, we can’t figure it out so this is what we came up with
for the time being).
While the outcome of the case is sensible, the approach by the Court was not as strong as it could have been.
So, the long and short of it appear to be that: (1) when dealing with any invention that includes natural phenomenon
(but don’t all inventions at some level) do not claim them too broadly and (2) be sure, when including natural phenomenon
in a claim, to subordinate the natural phenomenon to a defined process.
Please contact Wiemelt Knechtel at 602-901-4250 or 312-372-7664
or by email at email@example.com or firstname.lastname@example.org to
discuss how we can help you protect your intellectual property.
Monday, March 12, 2012
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Choice of a New Generation
Mark E. Wiemelt, of WIEMELT KNECHTEL, was quoted in a March 12, 2012 Advertising
Age feature article entitled Decades After Pepsi, MOM Is 'Choice of a New Generation'. The article
addressed potential trademark rights ownership, abandonment and residual goodwill issues in the context of MOM Brands'
(Malt-O-Meal) use of Pepsi's iconic slogan "Choice of a New Generation." Advertising Age is "is
the leading global source of news, intelligence and conversation for marketing and media communities."
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Thursday, March 1, 2012
8:42 pm cst
Wiemelt Knechtel was ranked among the "TOP PATENT
FIRMS" in the U.S. in the February, 2012 issue of Intellectual Property Today, a monthly publication
focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was also ranked among the "TOP PATENT
FIRMS" in the U.S. in the March 2010 issue of Intellectual Property Today. Wiemelt
Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2011, May
2010 and May, 2009 issues of Intellectual Property Today.