tag:blogger.com,1999:blog-5574479.post7154029127998011420..comments2024-03-29T12:23:31.959+00:00Comments on The IPKat: Zeus denies fire to PrometheusVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger10125tag:blogger.com,1999:blog-5574479.post-50285891050400098222012-05-04T14:42:20.494+01:002012-05-04T14:42:20.494+01:00Since Prometheus, we're all in a flap
The Supr...Since Prometheus, we're all in a flap<br />The Supreme Court's decision is unsound?<br />Still, a new end in view<br />Doesn't make something 'new'<br />(Adhesive Dry Mounting v. Trapp)<br /><br />(1910) 27 RPC 341Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-9184672279188858522012-04-12T12:41:37.768+01:002012-04-12T12:41:37.768+01:00For my money, Norman's is the best analysis of...For my money, Norman's is the best analysis of <i>Prometheus</i> to date. Nobody thinks you should be able to patent a 'law of nature'. The question is, whether you need a special provision in the law to do this, or whether normal rules of novelty already prevent it. I disagree with him only on the relatively trivial matter of whether the patent should have been granted or not. As far as I can see, the claim SCOTUS considered was to two physical steps known in combination, and an 'indicates' clause ['wherein a (particular result)'indicates a need' to (change or maintain the dosage rate)]. SCOTUS treated this clause as a third 'step'. But who takes it? The fact is that this claim does not distinguish from the prior art - the results obtained in the prior art 'indicate' in exactly the same way, the only difference is that we didn't know this before. Should you be able to stop someone doing something that's been done before on the basis that you've told them something new about it?<br /><br />I agree entirely with MaxDrei about this decision as a portent. There is no reason to think the CJEU would do any better than the US Supreme Court.Tim Robertsnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7520698900842364162012-03-23T06:27:39.178+00:002012-03-23T06:27:39.178+00:00The distress amongst patent lawyers in the USA is ...The distress amongst patent lawyers in the USA is mostly on the esoteric point that SCOTUS tainted its analysis of eligibility with considerations of novelty and obviousness. One supposes that briefings from patent lawyers immersed in English law were plentiful, but nobody told the Justices how the EPO sees eligibility.<br /><br />Personally, I think the best medicine for patent law is the EPO line, in which novelty and obviousness is kept out of eligibility (35 USC 101 and Art 52, EPC). In other words, do novelty and obviousness relative to the state of the art but do eligibility first, on an absolute basis, without reference to the day-to-day situation with the state of the art.<br /><br />Randall Rader, chief at the CAFC, is often in Munich and therefore, I guess, has absorbed the EPO line. But SCOTUS likes to disagree with the CAFC. Is this sort of squabbling what we might expect, if the CJEU gets to sit on top of DG3? If so, what a disaster for patent law in Europe.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76608535868748314722012-03-22T21:08:53.168+00:002012-03-22T21:08:53.168+00:00Although not the same thing as the dose-optimising...Although not the same thing as the dose-optimising patent at issue, it should be noted that there is empirical evidence medical diagnostics packs do quite well even without patents. The economic nature of the market for diagnostics tests means that competition based on quality, rather than price, helps keep good, reliable, firms afloat.<br /><br />I am sure, therefore, that personalized medicine will do very well without the need for patents like the one at issue in this case. The damage from monopoly of a drug-optimising method is grossly disproportionate than fears of removing disincentives in this area - which research shows are ill founded, to repeat my main point.Diego Teixeirahttps://twitter.com/#!/diego_ip_compnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-55403591337381991932012-03-22T17:46:37.812+00:002012-03-22T17:46:37.812+00:00Dear Norman Kat:
If, as it seems, this decision m...Dear Norman Kat:<br /><br />If, as it seems, this decision makes you upset to the point of physical and/or mental distress, then I suggest that you have a treatable condition that should respond if you take two aspirin with two ounces of 80 proof single malt Scotch whisky every hour on the hour for four hours. It this is ineffective or induces negative side effects, increase the dosage by 1 aspirin and one ounce of Scotch whisky each hour until the discomfort of any negative side effects dissipates or until your illness is cured.<br /><br />To save the IPKat from any liability, I should add that this is neither medical not legal advice. But if it were medical advice, it would surely be "patent pending" - at least according to your logic. If it were legal advice, the provider would either be the toast of the town or subject to disciplinary hearings.Hans Sachsnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-91413288298533932392012-03-22T15:54:33.890+00:002012-03-22T15:54:33.890+00:00Thanks for that, Norman. I'm not a chemist. W...Thanks for that, Norman. I'm not a chemist. What confuses me is that you say the test for this particular metabolite was old routine. Why were people paying for it, I wonder, if not to help them correlate with the dosage regime. <br /><br />In that case, I'm not sure that running the stats to come up with 230 rather than 200, or 250, as the lower end of the range or 400 as the upper end rather than 375 or 425, is a big enough deal to justify a patent.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5619931156693052192012-03-22T15:19:13.766+00:002012-03-22T15:19:13.766+00:00MaxDrei, I agree that it would be possible to fram...MaxDrei, I agree that it would be possible to frame a claim based on this discovery that would be valid; my sense is that the more closely it is tied to a specific embodiment, and preferably a tangible physical embodiment, the more likely it is to be valid. With that said, I'm not sure the granted EPO claim goes far enough. The in vitro test is routine, and I suspect it would be considered merely conventional post-solution activity. <br /><br />More generally, the more closely the claim is tied to a particular embodiment, the easier it is to take the substance while avoiding infringement. Prometheus' problem is that once the optimal range becomes commonly known by doctors, a competitor that simply provides the metabolite test without indicating whether the results are within the optimal range, would enable doctors to use the information without either party infringing a claim such as the EPO claim. So even if the EPO claim were valid in US law, I'm not sure it would provide adequate protection. <br /><br />I acknowledge that there is a problem with directing infringement actions at doctors for interpreting test results, but I don't think that a prohibition on patents based on discoveries is the appropriate response. If that problem is a serious one, it would be better to approach it directly, perhaps with something along the lines of the US exception for medical practioners 35 USC 287(c)(2)(A).Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-68718069185186337432012-03-22T12:23:28.167+00:002012-03-22T12:23:28.167+00:00Anon, is not the point that, prior to the inventio...Anon, is not the point that, prior to the invention, nobody knew that the measure of the optimal dose was to get the concentration of this particular designated metabolite into this particular numerical range.<br /><br />I am supposing this to be a research finding that is invaluable to patients. I am supposing that patents are there to encourage investment in research to arrive at such invaluable findings. I am supposing there was something novel, enabled and not obvious here, so that the key to it was presenting a claim that would not have SCOTUS recoiling in disgust at the sheer greed of the Applicant. The crux issue was the breadth of the claim, was it not? Is breadth to be filtered out with 35 USC 101, or with some other statutory provision, like 112?<br /><br />Or are you also against the claims issued by the EPO, in the parallel patent?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42061737147183461582012-03-22T12:08:42.503+00:002012-03-22T12:08:42.503+00:00From the report, I take it that Norman considers t...From the report, I take it that Norman considers the Supreme Court decision to be flawed. I am not of the same opinion. The identifcation of an optimum range of metabolite (here between 230 and 400 pmol per 800 million red blood cells although 450 would still apparently infringe) is a simple discovery. Telling the world that if the concentration is too low it needs to be increased and likewise if too high needs to be decreased does not deserve patent protection however it is dressed up.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70943015573109301942012-03-22T07:54:09.001+00:002012-03-22T07:54:09.001+00:00Norman writes:
"The claim at issue, which wa...Norman writes:<br /><br />"The claim at issue, which was held to be invalid, stated the optimal metabolite range, and instructed the physician to adjust the drug dosage accordingly."<br /><br />but I had gathered that the claim merely requires the doctor to think about whether to change the dose. You still infringe, whether or not you adjust the dose.<br /><br />Conversely, the granted EPO claim is directed to an in vitro test procedure.<br /><br />Would Nestle have fared better at SCOTUS if they had been less ambitious with their claim form. 20 years of monopoly on an invention which adds a new thought to an old process (prescribing a dose of a drug) is a big ask of a panel of 9 individuals, all of whom have families, and all of whom want personalised medicine from a doctor who has read and assimilated all the newest scientific papers on optimising dosages of the drugs they are on.MaxDreinoreply@blogger.com