Friday, 12 September 2014

The Post-Alice Post-Myriad Post-Mayo World

A series of US Supreme Court decisions have changed the patenting landscape in the US in the areas of computer-implemented, biotech, pharma and chemical inventions.

Mayo Collaborative Services v Prometheus Labs, Inc. (see here) held that a claim to optimising a drug dosage based on measuring metabolites in the blood was not patentable because it related to a ‘law of nature’.

Association For Molecular Pathology et al v Myriad Genetics, Inc. et al (see here) held that DNA molecules found in nature could not be patented.

Alice Corporation Pty. Ltd v CLS Bank International et al (see here) held that ‘abstract ideas’ implemented on a generic computer without providing an ‘improvement’ were not patentable.

This post looks briefly discusses the aftermath of the decisions and how commentators have continued to react to them.

1. Mayo was criticised by the biotech industry for undermining patents relating to diagnostics and possibly causing investors to stay away from the field of personalised medicines. It has led to a tremendous amount of uncertainty as to which diagnostic methods are patentable, but arguably it did not have a large impact outside that specific area.

2. The USPTO Guidelines issued after the Myriad decision (see here) were highly controversial. The USPTO interpreted the decision very broadly so that all products found in nature were unpatentable (not just DNA). In addition many methods involving natural products were unpatentable based on complex and unclear tests devised by the USPTO. Clearly many biotech, pharma and chemical cases will be affected by Myriad.

3. Practitioners were ‘horrified’ by the Myriad Guidelines (see here and here). There continues to be a lot of uncertainty as to when subject matter is sufficiently different from nature to be patentable.

4. However, the Alice decision has probably had the greatest impact to date, directly affecting both prosecution of cases and litigation. At this stage it is not clear how many software patents would be rendered invalid by Alice. Some commentators believe it is very limited decision (see here). Others believe that a majority of the software patents which are being litigated now would be invalid under Alice (see here).

5. A recent Patently-O article lists decisions in which Alice has had an impact (see here). There continues to be a lot of uncertainty as to which computer-implemented methods are patentable.

[Update: see a Vox article about 'crumbling' software patents here]

[Second update: see IPWatchdog on the destruction of the high tech economy here]

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