The Prometheus decision reflects that Supreme Court is obviously concerned about the possibility that a patent claim might preempt a law of nature and thereby broadly restrict use and application of the underlying principles.  Perhaps the concern is heightened by the fact that the claimed method relates to treatment of disease, and the prospect of preempting such treatment is troubling.  The reasoning set forth in the opinion, however, is anything but helpful.

The court dismisses a suggestion that virtually any step beyond a law of nature should transform an unpatentable law of nature into a potentially patentable application, sufficient to satisfy §101 whereby patentability could be determined under applicable novelty and obviousness analyses pursuant to 35 U.S.C. §102 and 103, saying that such an approach would render the “law of nature” exception to §101 a “dead letter.” The court, never the less, decides the status of the claimed subject matter under §101 under a point of novelty approach, leaving the reader to puzzle about which part of the opinion should be considered as determinative of what is proper under the law.

Our patent world was fairly “rocked” last week by the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision* .  Now that the dust is starting to settle (and hopefully the “verbal vitriol” being thrown is starting to subside), I’ve reflected more on what this decision means for the patent-eligibility of analytical and diagnostic method specifically, and the informed interpretation of patent law generally.  What I see expressed by Breyer’s opinion in this case is both ominous and alarming.  Frankly, for the past 5 or 6 years, I’ve witnessed “patent law despotism” and “patent hostility” being expressed by the Supreme Court like I haven’t seen since the 1970’s.

For those who have “cheered” Breyer’s opinion in Mayo Collaborative Services, the end result, the invalidation of Prometheus’ claimed drug dosage calibration method as patent-ineligible under 35 U.S.C. § 101, is the least bothersome to me.  That Prometheus’ claimed method would satisfy 35 U.S.C. § 101 was problematical to me after the Supreme Court’s decision in Bilski v. Kappos based on the final “determining step” and the “wherein clauses” which inform you (indirectly) when the dosage of the administered thiopurine drug  is too high or too low.  What Prometheus’ claimed method needed to do was use the measured metabolite levels gained by the “determining step” and, as guided by the “wherein clauses,” to achieve a useful result.  As Steve Hansen has kindly pointed out on this blog, Claims 1 and 13, respectively, of Prometheus’ related U.S. Pat. No. 6,987,097 do exactly that by stating that the drug dosage should be increased (if the metabolite levels measured are too low) or should be decreased (if the metabolite levels measured are too high).  If Claims 1 and 13 of the ’097 patent can’t pass the “patent-eligibility” bar under 35 U.S.C. § 101, then I don’t know what method or process claim can.

Recently, the Association of University Technology Managers (AUTM) held its annual meeting at the Anaheim Marriott in California.  Last year’s AUTM venue was Las Vegas, which offered attendees a variety of dining and nightlife options, and Anaheim was no different.  With Disneyland just around the corner, attendees at the Anaheim AUTM meeting had plenty of options for nightlife and networking.

I attended on behalf of inovia; it was our third year exhibiting at AUTM and our second year presenting a panel titled “Cost-Effective International Patenting Strategies” for AUTM attendees.  The panelists for this session were Matthew Bryan (Director, Patent Cooperation Treaty (PCT) Legal Division, World Intellectual Property Organization), Derek E. Eberhart, Ph.D., (Senior Licensing Manager, University of Georgia Research Foundation, Inc.), Susanne Hollinger, Ph.D., J.D., (Chief Intellectual Property Officer and Associate Director, Office of Technology Transfer, Emory University) and Alan J. Kasper (Partner & Director of the International Department, Sughrue Mion, PLLC).  The panelists discussed IP portfolio strategy, cost-effective foreign filing, Patent Prosecution Highway (PPH) programs, and effective use of the Patent Cooperation Treaty (PCT).

In the last decade, a substantial market has begun to develop for contingent fee representation in patent litigation. Wiley Rein — a traditional general practice law firm with hundreds of attorneys practicing all areas of law — represented a small company, NTP, Inc., in its patent infringement lawsuit against Research in Motion, the manufacturer of the Blackberry line of devices. The lawsuit famously settled in 2006 for $612.5 million, and the press reported Wiley Rein received over $200 million because it handled the lawsuit on a contingent fee basis. And Wiley Rein is not alone in doing so. Many patent litigators around the country have migrated toward handling patent cases on a contingent fee basis.

In the past, patent litigation was almost entirely performed on an hourly fee basis rather than on a contingent fee basis. That made sense because patent litigation appeared a poor candidate for contingent representation. Among other reasons, patent cases were expensive to litigate, took years to resolve, and outcomes on liability and damages were considered uncertain and unpredictable. In contrast, personal injury cases are relatively inexpensive to litigate, are adjudicated quicker, and often the liability of the defendant is not seriously disputed.

Jagshemash!

Recently, I was working on a patent search requiring me to look in areas of patent art relating to male underclothing (a very popular area for patenting, as you may guess) when I came across this little number: US Patent Application 12/071,878, which is titled “Scrotal Support Garment.”  The primary illustration is shown to the left.

Look familiar? Yes, with the exception of adjustable straps, this is the Borat Swimsuit, the swimwear made famous by comedian Sasha Baron Cohen, a.k.a., Borat in the 2006 film Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan. If you remember the movie (and how could you forget?), Borat wore this swimsuit in one very short scene at the top of the film. That short scene set the tone for the craziness that was Borat’s world.

Exhibitor applications due May 18, 2012

Washington – The United States Patent and Trademark Office (USPTO) will host the 2012 National Trademark Expo on Friday, Oct. 19, and Saturday, Oct. 20, at the USPTO’s headquarters in Alexandria, Virginia. The free two-day event is designed to educate the public about trademarks and their importance in the global marketplace. Last year’s Trademark Expo attracted more than 15,000 visitors of all ages.

Exhibitors are invited to showcase their federally-registered trademarks through educational exhibits, including booths, themed displays, costumed characters, and inflatables. In addition, the Expo features educational seminars for adults, and children’s workshops and activities.

David Kappos is Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office.  He assumed that role within the Obama Administration when he took over the USPTO in August of 2009, nearly 32 months ago.  Upon arrival Director Kappos found a largely dysfunctional Patent Office, which had really become the “No Patent For You” Office owing to the philosophical and ideological beliefs of the prior Administration.  This lead to the development of a massive backlog of un-examined patent applications and played no small part in the severity of the economic collapse and the sluggish rebound.  We have a technology based economy and start-up companies that are the backbone of our economy struggled without patents to attract capital investment, expand and hire.

There is still a massive backlog of patent applications, but things are undeniably turning around.  There are certainly some pockets of resistance within the USPTO, See Business Methods by the Numbers, but the Patent Office is by-and-large open for business.  The USPTO has returned to the historical philosophy that patent examiners should work cooperatively with patent applicants to identify allowable subject matter and issue patents on what is allowable, not just focusing on rejection after rejection after rejection.

While there are quite a few positive changes, with more in the works, Track One is by far the most successful policy initiative that has come to bear during the Kappos Administration.  The only problem with Track One is that more applicants are not using it!  What are you waiting for? A look at the numbers shows that Track One is a huge success and ought to be employed far more than it has been.

Recently I did an interview with Gene Quinn, which was published on IPWatchdog.com. See Exclusive Interview with Ray Niro, Mr. Patent Litigation. During this interview we discussed important issues and the undeniable reality that innovators are frequently and unjustifiably maligned for enforcing patent rights granted to them by the United States government.

During the interview Gene asked me about bad actors within the industry. Our exchange, in part, went as follows:

QUINN: It strikes me that there are some really bad actors out there that give everybody in the industry a bad name… Have you given any thought as to what could be done with respect to the bad actors without penalizing everybody that’s just engaged in legitimate business?

NIRO: Well, you raise an interesting point. There are clearly bad actors. And generally the bad actors fall into the category, I don’t think you can quantify based on what they’re seeking in damages. And I’ll circle back to that in a minute. I think you quantify on the basis of whether or not they truly represent the interest of inventors. I see an NPE as someone who’s created to help inventors. I don’t represent companies be they NPEs or whatever you want to call them, that are associated with inventors unless their model methodology is to help inventors. You do have a bunch of opportunists. Some of them are publically traded now. They’re playing a numbers game. They got—I don’t want to mention the company, but I think you can figure it out. That has a methodology of a bunch of people in horizontal across the board who’s job it is to generate revenue for the company. And their report card gets graded on how much revenue they generate. And they’re not as selective in what and how they enforce —they’re playing a numbers game. They don’t really care whether they win, lose, or draw, they get some lawyers to represent them and if I bring ten lawsuits and one turns out to be okay, that’s good for me. That methodology is bad. Because there isn’t a careful legitimate evaluation of the merits of the claim. They also happen to be the same kind of people that in my view are disconnected from the inventors. Their interest is not in helping an inventor.