Have Mayo and Alice gone too far?

For those of you following this blog, you will be familiar with our assessment of the recent decisions from the Supreme court in Mayo Collaborative Services v. Prometheus Laboratories and Alice Corp. v. CLS Bank International. These cases concerned what types of inventions qualify for patent protection under 35 U.S.C. 101, the statute governing patent eligibility. The cases were decided by the Supreme Court in 2012 and 2014, respectively, and both resulted in the invalidation of the patents involved. The first of these cases, Mayo, involved a method of administering a drug, gathering data on how the patient was responding to that drug, and deciding whether or not to alter dosage based on that information. This was determined to be a manipulation of natural laws using data and methods known to persons skilled in the art. Alice dealt with software for financial transactions, which the Court ruled to be an “abstract idea.”

Alice-and-Mayo-abstract

Mayo and Alice ...interpretation, but too far?

So why is it that these cases have become points of contention in the field of patent law? Simply put, these Supreme Court decisions offer precedent which is at best unhelpful for attorneys and courts, and at worst seriously concerning for patent owners.

To illustrate this result, we’re going to briefly examine a recent decision by the Federal Circuit, Ariosa v. Sequenom. In June of 2015, the Federal Circuit issued a ruling invalidating the method claims of U.S. Patent No. 6,258,540, held by Sequenom Inc. The patent concerned a means for using cell-free fetal DNA, which they discovered could be found in the blood of a pregnant mother, to determine the fetus’ susceptibility to a panel of genetic defects. The tests could also establish paternity or gender of the fetus, among other characteristics. While other diagnostic tests are able to make these determinations, until the method of the ‘540 patent was discovered the DNA for such tests would have to be harvested from the placenta or fetus. The method of the ‘540 patent allowed these tests to be run in a manner that was less invasive and dangerous for the fetus and the mother by using a sample of the mother’s blood. When the patent was struck down under the precedents set by Mayo and Alice, Sequenom petitioned the Federal Circuit for en banc review (a process by which the entire court is urged to reconsider the decision of one of its 3-judge panels). On December 2, 2015, the en banc court denied the petition, letting stand the panel’s decision and maintaining that it was bound by the Supreme Court decisions in Alice and Mayo.

Alice is firm on the impermissibility of patenting an abstract idea.

Ariosa represents one of the first major cases in which Alice and Mayo were applied to their fullest extent, with predictably troubling results. For instance, Alice is firm on the impermissibility of patenting an abstract idea (as is the language of 35 U.S.C. 101). However, the opinion issued by the Federal Circuit failed to define what constitutes an abstract idea, or offer a test for determining if an idea was too abstract to be patentable. Mayo concluded that discovering something new in nature did not show an inventive step; however, the court there stated that they “need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable”. Neither of these decisions made clear how their precedents should be applied in upcoming cases, yet both made clear that violations of these unknown standards would result in the invalidation of a patent.

Despite denying en banc review in the Sequenom case, the en banc review panel of judges expressed concerns about the rigid application of Alice and Mayo in these types of cases. Notably, Judge Dyk called the test of patentability outlined in Mayo “too restrictive" and stated that continued use of this standard may “discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences.” He also noted that the discovery of natural laws is the basis of diagnostic methods, and further went on to say that an inventive concept is present in a novel discovery of “a specific application of [a] new law of nature discovered by the patent applicant and reduced to practice.”

While the denial of further review for Sequenom stands, opinions such as these issued by the Federal Circuit only serve to further highlight the need for clarification on what the Alice and Mayo decisions mean for those of us in the business of acquiring and enforcing patents. This certainly isn’t the end of what will be a difficult battle for patent owners in the fields of software and medical diagnostics. We’ll keep you posted on new developments on this topic as they emerge.

Encouraging Kids of All Ages to Learn About Intellectual Property

Our kids are the future of this country; they are the inventors and innovators of tomorrow as well as our future business leaders. Thankfully there are many resources for them to learn about intellectual property. We were thrilled to learn that the USPTO has launched a new website that encourages kids and teens to create and invent, all the while discovering the importance of protecting their Intellectual Property (IP). The new site includes history, informative links, activities, and videos designed to help educate students, parents and teachers about patent law.

Here's a nicely produced video where innovators within the arena of extreme sports talk about the importance of inventing, patenting, and advancing their own tools of the trade. Many athletes (and even young people who aren't athletes) constantly serve as innovators within their disciplines, creating goods and technologies that make it possible to break new ground in competitions such as the X Games. Have a look:

 

 
That's how it's done, and it all starts with your idea! Corridor Law Group attorneys have a history of educating students about the patent process. Firm founder Bob Fieseler has visited local schools to teach students about patent law. This is something we feel that is important, because tomorrow's innovators are nearby in our own local classrooms.

Learning how to get your idea off the ground (and protected properly) isn't just for kids, either. Our attorneys often find themselves taking on the role of a teacher as they instruct and guide "first-time" clients through the patenting process. Give us a call if you have your own questions and want to learn more about developing your own IP.

So, way to go USPTO! Big applause from all of us at Corridor Law Group.
 
 

New York International Gift Fair 2013

New York International Gift Fair 2013

The NYIGF happens twice annually (in January and August) and is open to the trade only. Held in New York City, the Fair hosts 2,800 exhibiting companies showcasing the very best product lines across the home, lifestyle and gift spectrum. They see themselves as an "incubator for design," fostering emerging talents along the way.

This year, there will be 35,000 attendees from all 50 states and 80+ countries. That's a lot of idea-makers and idea-buyers gathered in one place. Here, it’s all out on the table — designer’s and manufacturers' intellectual property for all to see, with attendees possibly assuming they can freely use your IP in their own products.

This new line of fully customizable backpacks features a patent-pending strap design. Made from durable silicone, the straps have multiple holes for sizing and adding accessories like a carabineer or one of the complementary “Calamari” charms in monster, animal and voodoo doll designs. The straps are available in ten colors, and can be removed and interchanged to customize the backpack.

For many years, the Intellectual Property Attorneys at Corridor Law Group have helped protect the IP and new product designs for manufacturers across many diverse categories. We make sure our clients have a well-written, finely-tuned provisional patent application on file for their new products, before it’s possible for others to use your IP without asking and compensating you for it. Maybe you are planning to showcase your product at an event like the New York International Gift Fair one day soon. We're here (and there) to help.

Get to the NYIGF

Twice a year, an astounding array of the world's best home, gift and lifestyle resources converge at the NYIGF®...offering an incredible selection of exceptional merchandise in one convenient, well-organized marketplace.