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USPTO Issues Interim Mayo Guidance ~pj |
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Friday, March 23 2012 @ 07:26 PM EDT
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The US Patent and Trademark Office, Patently O
reports in the article "Examining Subject Matter Eligibility under Mayo v. Prometheus", has distributed a memo [PDF] with interim guidance on how to evaluate patent submissions now that the U.S. Supreme Court has spoken. He calls it a conservative new approach to process claims. That makes me smile. Patently O's Dennis Crouch says the memo doesn't directly say whether examiners should use the same analysis "when considering claims that include an 'abstract idea' such as a mathematical algorithm (i.e., software)." But I think it does. In this sentence, to be precise: "In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto." Why *wouldn't* that apply to software? I thought you'd like to read the entire memo. So I've done it as text for you. It mentions the USPTO's Interim Bilski Guidance, and you'll find that here. The USPTO will think more deep thoughts on this subject, study the two decisions, and come up with final guidance later. Crouch thinks they'll likely wait until the Myriad case is also decided. I can't wait.
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[USPTO logo]
MEMORANDUM
DATE: March 21, 2012
TO: Patent Examining Corps
FROM: Andrew H. Hirshfeld
Associate Commissioner
For Patent Examination Policy
SUBJECT: Supreme Court Decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.
Yesterday, in a unanimous decision, the Supreme Court held that the claims in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Mayo) effectively claim a law of nature and are not patent-eligible under 35 U.S.C. §101. The purpose of this memorandum is to provide preliminary guidance to the Patent Examining Corps. Additional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.
Claims to Law of Nature Itself Are Not Patent-Eligible
The claims in Mayo are directed to a process of medical treatment. Claim 1 is representative:
A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8X108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8X108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
The Supreme Court found that because the laws of nature recited by the patent claims – the relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage will prove ineffective or cause harm – are not themselves patent-eligible, the claimed processes are likewise not 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. The additional steps in the claimed processes here are not themselves natural laws, but neither are they sufficient to transform the nature of the claims.
In this case, the claims inform a relevant audience about certain laws of nature. Any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community. Those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. The Court has made clear that to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words "apply it." Essentially, appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible.
The decision rested upon an examination of the particular claims in light of the Court's precedents, specifically Bilski, Flook and Diehr. The Court repeated the long standing exceptions (laws of nature, natural phenomena, and abstract ideas) to categories of patent eligibility defined in 35 U.S.C. § 101. In conducting the analysis, the Court addressed the "machine-or-transformation" test explained in Bilski with a reminder that the test is an "important and useful clue" to patentability but that it does not trump the "law of nature" exclusion. A claim that recites a law of nature or natural correlation, with additional steps that involve well-understood, routine, conventional activity previously engaged in by researchers in the field is not patent-eligible, regardless of whether the steps result in a transformation. On the other hand, reaching back to Neilson, the Court pointed to an eligible process that included not only a law of nature (hot air promotes ignition) but also several unconventional steps (involving a blast furnace) that confined the claims to a particular, useful application of the principle.
Preliminary Guidance on Examination Procedure
As part of a complete analysis under 35 U.S.C. § 101, examiners should continue to examine patent applications for compliance with section 101 using the existing Interim Bilski Guidance issued July 27, 2010, factoring in the additional considerations below. The Interim Bilski Guidance directs examiners to weigh factors in favor of and against eligibility and reminds examiners that, while the machine-or-transformation test is an investigative tool , it is not the sole or a determinative test for deciding whether an invention is patent-eligible.
Examiners must continue to ensure that claims, particularly process claims, are not directed to an exception to eligibility such that the claim amounts to a monopoly on the law of nature, natural phenomenon, or abstract idea itself. In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.
If a claim is effectively directed to the exception itself (a law of nature, a natural phenomenon, or an abstract idea) and therefore does not meet the eligibility requirements, the examiner 2
should reject the claim under section 101 as being directed to non-statutory subject matter. If a claim is rejected under section 101 on the basis that it is drawn to an exception, the applicant then has the opportunity to explain why the claim is not drawn solely to the exception and point to limitations in the claim that apply the law of nature, natural phenomena or abstract idea.
The USPTO is continuing to study the decision in Mayo and the body of case law that has evolved since Bilski and is developing further detailed guidance on patent subject matter eligibility under 35 U.S.C. § 101.
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Authored by: jesse on Friday, March 23 2012 @ 07:49 PM EDT |
Thank you [ Reply to This | # ]
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Authored by: jesse on Friday, March 23 2012 @ 07:50 PM EDT |
Thank you. [ Reply to This | # ]
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Authored by: jesse on Friday, March 23 2012 @ 07:50 PM EDT |
Thank you. [ Reply to This | # ]
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Authored by: jesse on Friday, March 23 2012 @ 07:51 PM EDT |
Thank you. [ Reply to This | # ]
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Authored by: artp on Friday, March 23 2012 @ 08:50 PM EDT |
I look forward to the day when natural processes are looked
at as something to study and understand BEFORE trying to
rake in the moolah by deforming, distressing and demolishing
them.
There are copyrighted trees, bushes and vines. You have to
sign a contract that says that you agree never to take
cuttings from them for grafting onto different rootstock.
Even worse, some of these copyrighted plants came from
Universities. Almost every piece of fruit that you have ever
seen came from a grafted plant. In rare cases, you can find
fruit from "own-root" plants, ones that were not grafted
onto rootstock from a different fruit variety. So
restricting grafting is like restricting planting or
harvesting or any other basic farming process.
For centuries, farmers shared their discoveries with each
other, so that they could advance together. The community
was more important than the individual. There are some
definite advantages to that world-view. It minimizes
conflict, for one thing. It minimizes the gap between rich
and poor. It keeps people together and learning from each
other.
DNA, plant tissue, animals, life in general should not be
copyrighted, trademarked or patented. Patent the tools
needed to create new varieties, but realize that the results
are non-repeatable, and thus not eligible for protection.
Man is not smart enough to create life wisely. To see what
can go wrong, just look at the many state Dep't of Natural
Resources restocking programs, designed to bring back
selected wildlife without recreating the environment that
they flourished in.
Perhaps we should concentrate on understanding where we are
first? We are not wise enough to save the world, yet we
give people a bye to try it if they can make money on it.
What is wrong with this picture?
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Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?[ Reply to This | # ]
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Authored by: AntiFUD on Friday, March 23 2012 @ 09:02 PM EDT |
What is this 'claim' whereof this Guide speaks to so obtusely?
I have learned here on Groklaw that patents teach, and apparently therein there
are two distinct types of claims; namely dependent and independent. Such claims
basically restrict and/or focus the scope of the patent, and refine the breadth
of the application of the patent wrt an infringing article.
Upon re-examination of a number of Oracle's patents, I understand that a number
of claims were dropped and/or reworded (and sometimes supplemented with
apparently new claims) in order to avoid invalidation caused, mainly, by
Google's magnificent search for prior art. Somehow, I got the impression that
the necessitated changes sometimes makes such patent inapplicable to covering
potential infringement by Android/Dalvik.
Hence my frustration/confusion by the last sentence of the penultimate paragraph
of the Memorandum:
"If a claim is rejected under section 101 on the basis that it is drawn to
an exception, the applicant then has the opportunity to explain why the claim is
not drawn solely to the exception and point to limitations in the claim that
apply the law of nature, natural phenomena or abstract idea."
How can an applicant explain that a patent's claim (based on a law of nature,
natural phenomena or abstract idea) does not rely, as a basis, on such law of
nature, natural phenomena or abstract idea?
If the patent would stand without such law of nature, natural phenomena or
abstract idea why does it need to include such in its recital?
What am I missing? Apart from a few gray cells!
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IANAL - Free to Fight FUD - "to this very day"
[ Reply to This | # ]
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- all semantics - Authored by: Anonymous on Friday, March 23 2012 @ 09:31 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: Wol on Friday, March 23 2012 @ 09:36 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: PolR on Friday, March 23 2012 @ 11:03 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: Ian Al on Saturday, March 24 2012 @ 05:36 AM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: Anonymous on Saturday, March 24 2012 @ 12:13 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: darkonc on Saturday, March 24 2012 @ 04:33 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: PJ on Saturday, March 24 2012 @ 04:56 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: 400guy on Saturday, March 24 2012 @ 07:01 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: sysprog on Saturday, March 24 2012 @ 07:23 PM EDT
- Ummm... - Authored by: artp on Sunday, March 25 2012 @ 12:15 PM EDT
- Ummm... - Authored by: PJ on Sunday, March 25 2012 @ 03:01 PM EDT
- Ummm... - Authored by: bprice on Sunday, March 25 2012 @ 04:00 PM EDT
- Ummm... - Authored by: Anonymous on Sunday, March 25 2012 @ 10:11 PM EDT
- Ummm... - Authored by: artp on Monday, March 26 2012 @ 12:02 AM EDT
- Ummm... - Authored by: Anonymous on Monday, March 26 2012 @ 08:20 PM EDT
- Ummm... - Authored by: sysprog on Sunday, March 25 2012 @ 03:45 PM EDT
- 11 ? - Authored by: artp on Monday, March 26 2012 @ 12:09 AM EDT
- 11 ? - Authored by: sysprog on Saturday, March 31 2012 @ 02:44 PM EDT
- "can be challenged in Court" or by seeking patent review with the USPTO n/t - Authored by: Anonymous on Monday, March 26 2012 @ 12:49 PM EDT
- USPTO Issues Interim Mayo Guidance ~pj - Authored by: bugstomper on Friday, March 23 2012 @ 11:26 PM EDT
- Parsing the sentence - Authored by: Anonymous on Saturday, March 24 2012 @ 01:31 PM EDT
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Authored by: Anonymous on Friday, March 23 2012 @ 09:09 PM EDT |
Because software isn't abstract, in their view. It might be math,
but it's specific algorithms with defined parameters. Stuff that
didn't exist in nature until it was "invented". Oh, that's abstract?[ Reply to This | # ]
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Authored by: PolR on Friday, March 23 2012 @ 11:16 PM EDT |
There are interesting comments on the Patently'O article. Let me
point to this one where the commenter writes as if he were Einstein:
(extract of the comment go see the original for the full text)
""Laws of nature" are inherently already in the public
domain"
No. This is a fallacy.
For example, take one of my
equations.
My equation was not existing at the time I "discovered"
it.
My equation is not a "law" of nature, because it is not an actual fact.
It is a man made (by me) emperical tool and a representation of how I believe
nature to act.
It is a map.
A map is not the real world.
I
am not agreeing with the above. I just point out that there are people defending
this position.[ Reply to This | # ]
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- There's the rub - Authored by: Anonymous on Saturday, March 24 2012 @ 12:32 AM EDT
- There's the rub - Authored by: Anonymous on Sunday, March 25 2012 @ 01:19 PM EDT
- There's the rub - Authored by: Anonymous on Monday, March 26 2012 @ 04:53 AM EDT
- There's the rub - Authored by: Anonymous on Monday, March 26 2012 @ 02:47 PM EDT
- Should approximations of NP-hard problems get extra protection? - Authored by: Anonymous on Saturday, March 24 2012 @ 05:50 AM EDT
- It's an excellent argument - Authored by: Ian Al on Saturday, March 24 2012 @ 06:24 AM EDT
- The equation is not the law of nature. - Authored by: jesse on Saturday, March 24 2012 @ 07:26 AM EDT
- Laws of Nature Are a Fallacy - Authored by: Anonymous on Saturday, March 24 2012 @ 04:21 PM EDT
- Which equation would that be? - Authored by: Anonymous on Saturday, March 24 2012 @ 05:43 PM EDT
- Laws of nature v mathematical algorithms v ... ? - Authored by: leopardi on Saturday, March 24 2012 @ 10:52 PM EDT
- An actual *tautological* equation *is* a fact - Authored by: Anonymous on Sunday, March 25 2012 @ 07:35 PM EDT
- Since when are maps patentable? - Authored by: Anonymous on Monday, March 26 2012 @ 04:36 PM EDT
- Of course both things are excluded from patent eligibility - Authored by: hardmath on Monday, April 02 2012 @ 12:08 PM EDT
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Authored by: Ian Al on Saturday, March 24 2012 @ 04:56 AM EDT |
All those decades of computation and they come up with the answer to Life, the
Universe and Everything...
42!
Apparently, it was the landing of captains, hairdressers and patent lawyers that
damaged the workings of Deep Thought.
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Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid![ Reply to This | # ]
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