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| Authored by: macliam on Saturday, February 09 2013 @ 01:00 PM EST |
Responding on Fonar v. GE.
Disclaimers: IANAL etc.,
Based on a quick look at the Wikipedia page on Fonar v. GE, it would seem that
the issue of disclosure of software code concerns whether the 'best mode'
requirement is satisfied. This would seem to be independent of Section 101
patentable subject matter considerations.
It seems to me that the essential question that led to the CLS v. Alice en banc
appeal is whether the decision of the Supreme Court in Prometheus v. Mayo has
relevance to 'Section 101' eligibility considerations with regard to
computer-implemented inventions.
Some of the CAFC judges would no doubt argue strongly that Prometheus v. Mayo is
of no relevance here.
My understanding is that the CAFC approach to the interpretation of Section 101
is based on principles enunciated by Judge Giles S. Rich about three decades ago
that essentially made eligibility under Section 101 a dead letter. (I was
looking at the majority opinion written by Judge Rich yesterday evening in the
case In re Bergy/Chakrabarty, following vacation and remand of the first CAFC
ruling on In Re Bergy in the light of Parker v. Flook.) Judge Rich explained
the 'three doors' to patentability, and made it clear that, for all practical
purposes, the first door (section 101) is an open door.
The Supreme Court in Prometheus v. Mayo made it plain that they did not accept
that eligibility for a patent depended on satisfying the requirements of
sections 102 and 103 alone (as Judge Rich had apparently claimed). In so doing,
they surely refuted the basic principles established by Judge Rich that have
formed the basis of the CAFC jurisprudence (or lack thereof) with regard to
patent eligibility. The Supreme Court surely stated that, where a claim could
plausibly be regarded as being drawn to a basic application of one of the three
standard judicially-created exceptions (laws of nature, natural
phenomena/products, abstract ideas), further analysis was required to determine
whether the purported application added 'enough' to warrant patentability.
Maybe some of the CAFC judges will attempt to 'cabin' the Prometheus v. Mayo
decision relevant only to claims for diagnostic tests, and will disregard the
principles expressed in the judgement as mere dicta that they are minded to
ignore. Alternatively the CAFC may take on board the general principles of the
Supreme Court judgement. (Don't hold your breath.)[ Reply to This | Parent | # ]
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- Bergy - Authored by: Ian Al on Sunday, February 10 2013 @ 04:50 AM EST
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