11 responses to “Audioconference on the Future of Biomedical Patenting”

1. 

   6

   July 31, 2010

   ” Is there a middle ground?”
   Yes, you guys stop patenting abstract ideas and start fiddling around with those pesky useful arts, then you may patent those advances.

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2. 

   Gary Johnston

   August 1, 2010

   Kevin:
   Make sure that you tell everybody that the “detect and infer” claims are dead if the detection step is old. And if it isn’t old, then who cares about the inference step?
   Make sure that you also tell everybody that there is no evidence of any kind that prohibiting “detect and infer” patents will lead to less “detect and infer” tests. First, the research leading to the discoveries which form the basis of “detect and infer” tests will be done with or without patents. Second, more than 95% of the “detect and infer” tests offered by the largest reference laboratories in the U.S. have no patent protection. This bogeyman stuff is beneath you.
   Finally, make sure that you tell everybody that if they want to protect “detect and infer” tests, they need to start lobbying Congress for a marketing exclusivity scheme such as what exists for drugs.
   The end is near.

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3. 

   Kevin E. Noonan

   August 2, 2010

   Dear 6:
   You are a reliable barometer of the “rejection of the week” we can expect from the Office. Now everything you think is unpatentable will be an abstract idea. Tell me, what is abstract about performing a blood test or a genetic screen?
   Thanks for the comment.

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4. 

   Kevin E. Noonan

   August 2, 2010

   Dear Gary:
   Your comment reminds me of the disclaimer in financial prospecti, that “past performance is not indicative of future returns.” Just because the diagnostic industry in the past has not relied on patenting doesn’t mean it will not in the future, or that preventing patenting will not provide an incentive to “hide the ball” on testing, with deleterious consequences for society.
   And I cite Judge Rich as at least one authority that disagrees with your calculus that the fact the test is old is determinative. The claim is assessed as a whole, and a new use for an old method is patentable – what could be the basis that it would not be?
   We don’t intend to raise any bogeymen, just to talk about how innovators can protect their inventions if the plaintiffs prevail. It isn’t pretty.
   Thanks for the comment.

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5. 

   6

   August 2, 2010

   “Now everything you think is unpatentable will be an abstract idea.”
   Well Kev, I wouldn’t say that it “will be” an abstract idea, but I will say that a whole lot of claims do happen to preempt an abstract idea. In which case, it is the practical equivalent to a claim to the abstract idea, and the courts have held that is a no no. Tsk Tsk.
   “Tell me, what is abstract about performing a blood test or a genetic screen?”
   Depending on the claim what is an abstract idea and is having all uses of preempt by your claim is probably some correlation between parts per million of some compound in the blood to some disease etc.
   Kev. This isn’t rocket science. You know good and well that you’re wanting to preempt all uses of a specific abstract idea by getting some of those kinds of claims. Like in Prometheus. Be honest.
   I even wrote Ned Heller a little primer on the difference between claims that are quote un quote “directed to an abstract idea” but are none the less not an abstact idea themselves. They should not be confused.
   I wonder if those round-up ready seed claims preempt any abstract ideas? Hmmm. Food for thought, so to speak.

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6. 

   Kevin E. Noonan

   August 2, 2010

   Ah, 6: you are a fixed constant in a changing world. Let me lay it our for you.
   There will always be an “abstract idea” behind any invention, since human beings are good about making up reasons for what they observe in the real world. But if you appreciate the meaning of the word “pre-emption” as it has been use by the Supreme Court (in Diamond v. Diehr, for example), here is the analogy with a blood test. If I claim “a method for detecting X in blood from a human,” then I have pre-empted all uses for that detecting step because anyone who detects X will infringe my claim no matter what it is detected for. If, on the other hand, I claim “a method for detecting X to diagnose a vitamin deficiency,” I have not pre-empted the use of “a method for detecting X to predict a risk of disease Y.” And since the X’s that can be detected in blood may be indicative of many things (both healthy and disease-related) there is nothing in my “Metabolite-like” claim that pre-empts anything. Except the specific use of a test to specifically identify a vitamin deficiency, which we will assume is novel, useful and non-obvious (because we are talking patent-eligibility not patentability).
   But I can see that blind recitations of “that’s just an abstract idea” may be forthcoming from at least some PTO personnel, so I will be sure to mention this likelihood (and how to rebut it) in the seminar.
   Thanks for the comment.

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7. 

   6

   August 2, 2010

   “There will always be an “abstract idea” behind any invention, since human beings are good about making up reasons for what they observe in the real world.”
   There may be one “behind” any invention, but you won’t be able to find any claims issued by myself that wholly preempt any abstract ideas. Except maybe one, issued by me before I was familiar with that portion of the law. And even that one is probably safe.
   “I have not pre-empted the use of “a method for detecting X to predict a risk of disease Y.” ”
   No, but you likely did preempt all uses of the abstract idea that an amount Z of X in blood indicates a risk of disease Y. I changed the hypo a bit to be more inclusive of what is likely going on in the claim, but I’m sure you won’t mind.
   “And since the X’s that can be detected in blood may be indicative of many things (both healthy and disease-related) there is nothing in my “Metabolite-like” claim that pre-empts anything.”
   Wrong, in at least several occasions, as I just noted above.
   “Except the specific use of a test to specifically identify a vitamin deficiency, which we will assume is novel, useful and non-obvious ”
   And the abstract idea that such a level of vitamins corresponds to a “deficiency”. Or is there another use for that abstract idea that isn’t included in your claim?
   “But I can see that blind recitations of “that’s just an abstract idea” may be forthcoming from at least some PTO personnel, so I will be sure to mention this likelihood (and how to rebut it) in the seminar.”
   Good luck. I personally give something a little different than a “blind recitation of “that’s just an abstract idea”” if I’m feeling srs about your case. I simply recite the abstract idea I feel you’re preempting. And if I catch you, you’re not likely to get away with this sort of thing. At least not with these weak rebuttals that appear to be little else than neglecting the abstract ideas that you are preempting in favor of analysing only the non-abstract implementations that you claim in order to capture the entire abstract idea. You can’t set the abstract ideas that you are preempting to the side and only focus on your claimed implementation Kev, one must consider both.

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8. 

   Kevin E. Noonan

   August 3, 2010

   Thank you, 6 for nicely illustrating my point.

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9. 

   6

   August 3, 2010

   You’re quite welcome Kev, I can’t wait to see your ineffective “rebuttals” in action. Substantial LOLS are to follow.
   What a racket you’ve got going here. Selling hope to the hopeless.

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10. 

    Kevin E. Noonan

    August 4, 2010

    Dear 6:
    Listen and learn, grasshopper.

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11. 

    6

    August 5, 2010

    You’re charging entirely too much money for that Kev.
    By the by, if you’re in the DC area we just got a severe t-storm warning.

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