There has been considerable controversy in the United States in
recent years about which types of inventions are eligible subject
matter for patenting, and which do not meet the threshold because
they are mere abstract ideas or laws of nature. This has been an
especially hot issue for biotechnology patents, such as diagnostic
methods and isolated genes, and computer-implemented patents for
Patent eligibility is determined according to a broadly written
section of the U.S. patent statute, 35 U.S.C. §101, that some
courts have been recently interpreting more narrowly. The U.S.
Supreme Court released its highly anticipated decision in Alice Corporation Pty. Ltd. v. CLS Bank
International et al on June 19, 2014. The unanimous U.S.
Supreme Court, in two separate opinions, held that the
computer-related claims are not patent-eligible under 35 U.S.C.
§101 because they relate to an invention involving mitigating
risk in financial settlements, which is merely an abstract idea.
The Justice Thomas majority decision for the Court relied heavily
on the reasoning of two of the Court's prior biotechnology
decisions (Association for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 12-398, and Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 10-1150).
The Court also followed its recent computer business method patent
decision in Bilski v. Kappos, 561 U.S. 593.
Sotomayor's short, concurring opinion further cited
The Court followed the approach of the earlier decisions by
stating that it "must first determine whether the claims at
issue are directed to a patent-ineligible concept. If so, the Court
then asks whether the claim's elements, considered both
individually and 'as an ordered combination',
'transform the nature of the claim' into a patent-eligible
The method of computer implementation did not transform the
abstract idea into a patent-eligible invention. The system and
media claims were also patent-ineligible because they did not add
anything further that made a difference.
Since the invention was a computer-implemented method, the case
will have direct implications on biotechnology methods implemented
by computer, e.g., biotechnology data mining, or methods of
processing data to produce genetic or health information. There is
no focus or comment in the Court's decision on patent
eligibility of more conventional biotechnology inventions, such as
diagnostic methods using chemical analysis or isolated genes, which
were addressed in the Court's earlier decisions. It is clear
that by citing its own earlier cases with approval, without further
modification that could address concerns of biotechnology patent
applicants, that the Court is committed to continuing to follow the
same trail. This decision, therefore, does not provide news to
improve the situation for the minority of biotechnology inventions
that have issues with respect to patent eligibility because their
subject matter is allegedly a law of nature or abstract idea. The
bar for patentability of those biotechnology inventions remains
raised. Patent applicants will have to be creative in drafting
patent applications for these inventions, for example, by focusing
on claims that include novel and inventive reagents in diagnostic
methods. The USPTO has reviewed the Court decision and issued
guidance to Examiners. Click here to view the USPTO's Preliminary
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Join Bereskin & Parr partners Susan Keri and Terry Edwards on Wednesday, May 3rd, 2017 for an in-depth discussion with prominent lawyers from the EU and UK about trademark issues for Canadian businesses doing or planning to do business in Europe.
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