Recently, a district court for the District of Columbia
invalidated a patent claiming a system and method to guide the
selection of therapeutic treatments using a computer program.
See SmartGene v. Advanced Biological Laboratories, No.
1:08-CV-0642 (BAH), 2012 WL 1059611, ___ F. Supp. 2d ___ (D.D.C.,
March 30, 2012). The court ruled that the patent claims were
abstract and not patent-eligible subject matter under 35 U.S.C.
§ 101, see id. at *18, because they are "merely
a recitation of abstract steps, rather than an innovation that adds
something 'specific to the laws of nature [or abstract ideas]
other than what is well-understood, routine, conventional activity,
previously engaged in by those in the field.'"
Id. at *10 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., __ U.S. __, 132 S.Ct. 1289, 1299
(2012)).
The SmartGene opinion attracted considerable attention by virtue of
its issuance upon the heels of the Supreme Court's ruling in
Prometheus and its citation to that case. While the case
is well worth reading, the result is unsurprising and does not
depend on Prometheus. As shown by the court's thorough
analysis of the claims and examination of more than thirty years of
Supreme Court precedent, ABL's patent claims were unpatentable
as abstract ideas under cases reaching back at least to Parker
v. Flook, 437 U.S. 584, 98 S.Ct. 2522 (1978). The recitation
of three databases – containing therapeutic treatment
regimens, a list of "expert rules," and "advisory
information" respectively – on a general purpose
computer merely replicates the abstract, unpatentable thought
process of a medical professional diagnosing and treating a
patient. See SmartGene, 2012 WL 1059611 at *7-*13. The
court also examined the claims under the "machine or
transformation" test, and found that both the general-purpose
computer was not a qualifying machine, and that the claims involved
no transformation. Id. at *13-*18. In conclusion, thinking
about a decision is still unpatentable.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.