In the ACLU v. Myriad case, the ACLU has alleged that the patents involved in the case cover genes found in nature. This statement is so patently (pun intended) false, that the ACLU either purposely deceived the court or is guilty of gross negligence about the facts plead in the case. As Gene points out in his post, Fired up: Challenging the Constitutionality of the Patent Act none of the claims in question cover genes found in nature. These claims are directed to screening, identifying, and isolating the BRCA1/2 genetic sequences. This is not a claim to the gene itself, but methods of screening, identifying and isolating the genes, which are processes not found in nature. This is no different than a patent having claims for screening, identifying or isolating gold. Gold is found in nature, but methods for screening, identifying, or isolating gold are not found in nature and are definitely patentable subject matter. The ACLU either purposely deceived the court when they stated “The patents cover the human genes themselves”, paragraphs 3-4, 55-67, & 102 of the complaint, or showed gross negligence about the facts pleaded in their complaint.

Last week I chatted via phone with Terry Carter, a journalist working on a story for publication in the ABA Journal.  We talked about a number of different patent topics, and I am certainly looking forward to reading his article when it appears.  Later on in the week Carter informed me that he was having difficulty getting through red tape at the Patent Office to schedule an interview with USPTO Director David Kappos.  He told me he was thinking about trying to prepare a patent application on a method to get an interview with David Kappos, which he thought might bring a chuckle to those within the Patent Office and perhaps make it easier to get a return phone call.  It seemed like a very creative plan, so I offered my assistance and over the span of a couple hours we put together a mock patent application for a method of getting an interview with one David Kappos. I turned to my own invention — the Invent & Patent System — to create a first draft of the application, sent it off to Carter and after the exchange of a few e-mails it was good enough for its intended purpose and I understand it was faxed to the Patent Office. It did indeed help Carter cut through the red tape and schedule an interview with Director Kappos for early next week.  Mission accomplished!

Recently I received an e-mail with a link alerting me to something posted on the 271 blog relating to Bilski. The video (viewable on the 271 blog) is taken from a movie about World War II that focuses at least in part on Adolph Hitler. The video posted is from a scene that appears to be taking place in Hitler’s bunker, and seems to be toward the end of the war when only bad news about the Allied advance was being given to Hitler. This video seems to be rather popular on the Internet because since it is not in English subtitles can be inserted to turn the clip into a tool to promote whatever is desired by those creating the derivative work. In this particular case the subtitles added relate to the Bilski case. I have been conflicted by how to handle this. It seems it would be of interest to many patent attorneys following the Bilski matter, but I am uncomfortable about using any Nazi or Hitler references in the same breathe as patentability.  There is simply no comparison and it seems there is something not right about using the most hated man in human history in this way, or in any way, suggesting even tongue in cheek that the atrocities of the Third Reich in any way are comparable on any level to the ongoing patent rights debates. Nevertheless, there is something that was inserted into the end of the video that does deserve some attention. There is no denying that the assault on intellectual property rights, particularly patent rights, is a major problem and if it continues innovation will be seriously and negatively impacted. There is also no denying the fact that those boldly challenging patent rights are anti-patent and would prefer no patents at all. Therefore, while your particular innovations may not be challenged directly the assault on patent rights in one sector is and should be a concern for all innovators and patent owners. It is time for us – all to stand up for innovation and take action.

Once again I find myself traveling for PLI, this time I am in an airplane heading for Oakland, California, with the final destination of San Francisco, California via taxi. This will be the last live location for the PLI Patent Bar Review Course for 2009. John White and I will be in San Francisco teaching at PLI headquarters downtown starting Wednesday and running through Sunday. There is always a home study course available for those who want to take the course between now and our next live course, which will be from January 6-10, 2010 in Washington, DC. So as I travel cross country I will be working on a few articles I have wanted to get to for some time, but which obviously don’t require contemporaneous research. One such article is a different kind of KSR perspective. Since the infamous and horribly troubling decision by the Supreme Court in KSR I have from time to time looked at the crazy patents that continue to be issued by the US Patent Office and concluding that KSR is much ado about nothing.  For example see Crazy Patents in an Era of Alleged Patent Quality. Of course that is not really true, but the Supreme Court KSR decision did replace the previous objective test and supplanted it with a subjective test that literally requires inventors to demonstrate they undertook a fools errand because they knew their invention could not work. The only way that makes any sense logically is if it could be used to prevent trivial, perhaps stupid patents. That hasn’t happened though, so what good did KSR do? None, but it has and will cause harm. Notwithstanding, I thought it might be fun to identify a few inventions that clearly are not obvious, because if they were as obvious as they seem a variety of very smart people would have figured them out long ago. This is the first in what will hopefully be a fun series of obvious non-obvious inventions.

The Wall Street Journal is reporting good news for patent owners, in particular those holding patents on green technologies. President Obama, who is currently attending the Asia-Pacific Economic Cooperation forum in Shanghai, China, along with other world leaders announced that they no longer have ambitions of reaching a binding international agreement on climate change during the United Nations Climate Change Conference in Copenhagen, which begins December 7, 2009 and runs through December 18, 2009. This is extremely important for those who are interested in strong intellectual property protections, particular patent rights. It had been feared that in order to obtain an international agreement the Obama Administration would broker the patent rights held by US concerns and give them to third world and developing nations in exchange for them taking steps to curb carbon dioxide emissions. Thus, the news that there will not be a binding agreement as a result of the UN conference in Copenhagen can allow patent and intellectual property advocates breathe a sigh of relief, at least for now.

Earlier today the Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit issued an Order declaring the pending appeal of Dr. Tafas and GlaxoSmithKline moot due to the fact that USPTO Director David Kappos has withdrawn the rules. The Federal Circuit per Judge Michel, however, denied the motion of the USPTO and GlaxoSmithKline to vacate the district court opinion authored by Judge Cacheris. Most will recall that a three-judge panel had voted 2 to 1 (over the strong dissent of Judge Rader) to overrule most of Judge Cacheris’ opinion. The entire Federal Circuit decided to hear the case en banc, which was mooted by Kappos’ withdrawal of the rules. In the Order to rehear the case en banc the Federal Circuit vacated the three judge panel decision, leaving the original decision of the district court as the standing judicial decision on the rules, at least pending rehearing en banc. What this means is that the scathing indictment contained in that opinion regarding how the USPTO went about instituting the claims and continuations rules remains, as does the precedent, albeit district court precedent, standing for the proposition that the USPTO acted without authority and the claims and continuations rules directly contradicted the relevant patent statutes enacted by Congress. This should open the door for Dr. Tafas to return to the district court to make his case that he is a prevailing party and should be entitled to his attorneys fees, which was one of the points raised by his attorneys in their motion objecting to vacatur.

Now that the Bilski oral arguments are complete and the case has been submitted to the Court for consideration the guessing game begins.  Normally trying to figure out what a court will do is a waste of time, particularly so when that court is the Supreme Court, which is not bound by precedent of any kind given that they are the court of last resort.  Having said that, the Bilski Federal Circuit decision is of such importance and inventors and clients cannot simply stand still waiting for a decision, holding themselves up until things become clear.  You simply cannot wait to file a patent application in most cases, and there is the distinct possibility that the Supreme Court will not actually answer the questions or answer them in a way that provides clarity moving forward.  The Supreme Court has been known to provide some guidance about what is not appropriate to bookend the limits of what is acceptable, then kicking a matter back down for lower courts to address the minutia.  That is certainly frustrating, but in keeping with a small “c” conservative judicial approach where nothing more than is absolutely necessary has been said.  If only the Federal Circuit had done that we wouldn’t be here.  In trying to piece together what might happen I think we should dissect some of the patent writings of the Justices, so without further ado lets begin with Justice John Paul Stevens.

Unlike Gene I did not really plan very well. I did not have credentials and am not (yet) a member of the Court. So, I was in line with the public. A patent centric public, but the public none-the-less. My fellow line standers included: Law students headed to taking the patent bar; a Finnegan partner (made me feel a little better about my failure to plan), and other patent world folks. The highlights: for this argument, the general admission line formed before midnight on Sunday! Only the 1st 40-50 of the 300+ people in line were admitted. The rest of the seats were taken by press, court members, and those with reservations. So, it was, even in the world of the Supreme Court, a big case. The line for admission became the 5 minute (sightseeing/tourist) line in short order. We were shuffled through, some re-cycling themselves in line so as to hear as much of the argument as they could. Real dedication here. Outside, tourists had asked what was so important that had all the people lined up; when told it was a patent case, universally none could understand why that would matter, and generate such a line!

At 2pm ET on November 9, 2009, Chief Justice John Roberts gaveled the session to a close announcing that the case had now been submitted. The arguments were good, and the Court was most assuredly hot, peppering both sides with question after question seeking to probe the issues. It is clear that the Supreme Court did their homework and spent no time gravitating to the weak points of the parties. Representing Bernard Bilski was Michael Jakes, who was continually questioned about business methods in general and whether the framers or the authors of the 1952 Patent Act could have ever contemplated business methods being patentable. Representing the United States Patent Office, Deputy Solicitor General Malcolm Stewart was questioned repeatedly with respect to the “extreme” decision reached by the Federal Circuit, not to mention the fact that the government’s position is that an old computer running new software could somehow potentially be patented as a new machine. At the end of the day I have to think that it does not bode well for Bilski and his method, but if the questions raised by the Supreme Court are any indication it seems like the Federal Circuit will be overruled and the software and medical industries will dodge a Bilski bullet.  For more analysis be sure and check back in the coming days, weeks and months, and join me for a PLI Bilski briefing on Wednesday, November 11 at 1pm ET.

Later today the United States Supreme Court will hear oral arguments in the Bilski matter. It is not an overstatement to say that the fate of much future innovation rests squarely on the Supreme Court getting this one right, so lets hope for the best and pray that they do get this one right. There is every reason to believe that the Supreme Court will accurately and appropriately reach a sensible decision relative to patentable subject matter, but there is also at least some fear that they may get it wrong, and wrong to the point where vast amounts of innovation will cease, stall and simply never develop. Because the Federal Circuit as a whole sitting en banc decided not to demonstrate judicial restraint and completely ignored long standing judicial principles associated with answering only the limited questions presented by the case, far more was said in Bilski than necessary, and it is safe to say that those in the majority in the CAFC Bilski decision could never have known the extent of the fall-out caused by opening a patentable subject matter Pandora’s Box. But that is precisely why judges are not supposed to be activist, why they are supposed to undertake a conservative approach and only decide the narrow question before them. Too bad the majority of the CAFC missed those days in law school classes where we all cursed the Supreme Court for not addressing the issue of social importance and instead decided some narrow, inconsequential issue or simply punted it back to the lower courts as a result of some technical matter.  Had they not maybe they would have known to stick to the issue at hand.

NOTE: This was originally written as a comment to my article Much Ado About Nothing Over First to File.  It is posted here as an article with the permission of Ron Katznelson.

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I generally respect those who have the capacity to change their opinions based on substantial relevant evidence and a compelling underlying factual record that supports such a change. And I know you to be one who had made shifts in the past based on such sound bases, and you earned all of our respect for that. However, this one is a surprise to me, as I now see you change your mind over mostly irrelevant facts and over what appears as a profound misunderstanding of the adverse effects of transitioning to a First-To-File (FTF) system. There has been much folklore and obfuscation about FTF and you may have fallen for it based on, what I believe to be genuine, but tangential experience. You and others are missing the point by looking only at a formulated invention and whether it takes three months or one year to file it. You are missing the point if you believe that the stakes are solely related to the quality, content or the submission speed of an application that is ultimately filed with the USPTO. Rather, the harmful effects of FTF for small startups and early-stage patenting firms is in losing patent protection on inventions for which applications will not, or could not, be filed. Harm will not merely arise due to the “race to the patent office”. Harm will be inflicted due to the race to the patent office with the wrong application, for the wrong invention, and for the wrong reasons, while exhausting precious resources in the process. As David Boundy correctly points out, “First to File” vs. “First to Invent” is a misnomer and the use of these terms is mere obfuscation. Interference priority contests at the USPTO and their numbers under current law are entirely irrelevant for assessing the effects of FTF on important inventions that I’m afraid will never reach the USPTO. Several facts, some of which have been touched on in prior comments, can help in appreciating these pernicious aspects of FTF.

Just about 24 hours ago I posted an article relating to my changing position with respect to first to file, and already there is something of a firestorm.  I understand there are those who feel I have abandoned them and adopted a naive view of the world. But excuse me for recognizing the new tone and identifiable actions taking place at 600 Dulany Street.  Yes, I have been an ardent supporter of first to invent for years, but I have been questioning my views for some time, as I speak with attorneys, inventors and others.  Then several things recently caused me to realize the benefits of first to file for the independent inventor community, and then I heard USPTO Director David Kappos explain that in 2007 only 7 cases were decided in favor of an individual who invented first and filed second.  Kappos explained “we already have a de facto first to file system.”  All this arguing for 7 cases?  Cases where once the rule changes behaviors will change to the point where some, perhaps most or even all of those 7 cases will never happen again because everyone will know they need to file rather than wait.  On top of that, it is inarguably good, correct, legally sound and business appropriate advice to file sooner rather than later.

I am just getting back from two days at the United States Patent and Trademark Office, having attended the 14th Annual Inventors Conference.  There is much to report, and much to write about, and I will continue to digest, analyze and write about what I saw and my impressions in the days to come.  It is, however, undeniable that there is a completely different tone at the Patent Office.  Senior level management, from Director David Kappos,  Deputy Director Sharon Barner, Patent Commissioner Bob Stoll and Deputy Commissioner Peggy Focarino, mingled with inventors and seemed genuinely happy to discuss issues and appear committed to revitalizing the patent system.  There were many, including myself, who wondered what direction the Patent Office would take under new leadership, and while it is early to give a grade, if we are going to be honest and give an interim report card the only fair grade to give at this point is an A.  From top to bottom there is an optimism that exudes from everyone I spoke to at the Patent Office.  Changes that ordinarily would take months are taking weeks, and the political leadership seems to REALLY understand the importance of innovation.  In fact, in video-taped comments played during lunch today Commerce Secretary Gary Locke said that the Obama Administration pledges to provide US inventors the strongest IP protection available anywhere in the world.  What more could we realistically ask for at this point?

The 14th Annual Inventors Conference is presently ongoing at the United States Patent and Trademark Office in Alexandria, Virginia.  The conference started yesterday and continues today.  I am here at the USPTO presently, and I was here yesterday as well and had an opportunity to hear Patent Office Director David Kappos address the attendees during a lunch speech and then again during the reception at the end of the day.  Congressman Dana Rohrabacher (R-CA) also spoke during the reception last night, giving a heavily pro-inventor, pro-patent speech to a very receptive audience.  The event has run smoothly, the presentations have been good and it is always nice to be able to get face-to-face time with friends and allies within the independent inventor community.  The one potential hot-button issue to be discussed at this conference and taken directly head on by Director Kappos was patent reform, and in particular those issues that may be seen by some as difficult to swallow in the independent inventor community.  Credit definitely needs to be given to Kappos for now shying away, addressing concerns and answering questions.  I think he even persuaded some in the audience, one of whom was me.

I just so happened to stumble across an interesting article declaring me Patent Twit of the Week.  Normally one would not be proud of being declared a “twit,” but I have to say that I am enormously proud of this recognition.  It seems that The Center for a Stateless Society has declared me a patent twit.  Yes, you read the name correctly. These folks are nothing more than anarchists who hold a grudge, which I realize is a redundant characterization. In any event, this is mighty high praise coming from an organization that describes themselves as a project “dedicated to building public awareness of, and support for, market anarchism.” So why do I care? Why do I even given them the time of day? It certainly isn’t to promote them or to even engage in a debate with them. I write only to disclose the biases of those who have an anti-patent agenda. With the ever building assault on intellectual property rights and patents in particular I think it is imperative that decision makers understand the positions and biases of those leading that anti-patent charge. Those leading the charge and cheering from the sidelines are anarchists who make up lies to support their positions and ignore facts.  They would have us dismantle our patent system, our economy and our government.  So allow me to expose the anti-patent movement for what is — utter nonsense.

On Monday, November 9, 2009, the United States Supreme Court will hear oral arguments in the much anticipated Bilski case, which could well decide once and for all whether business methods and software remain patentable in the United States. I will be in attendance at the oral argument, which will take place after a lunch recess. I will be joined by John White , the creator of the PLI Patent Bar Review Course and patent attorney with Berenato & White. My intention is to write and post throughout the day on Monday, leading up to the oral arguments and then in the afternoon as soon as I an after oral arguments are completed. John and I will then participate in a PLI Hot Topic Briefing on Wednesday, November 11, 2009 from 1pm to 2pm ET. We will be joined on this briefing by Scott M. Alter of Faegre & Benson LLP and Douglas R. Nemec of Skadden, Arps, Slate, Meagher & Flom LLP, both of whom along with John White are co-chairs of PLI’s 4th Annual Patent Law Institute. The title of the PLI briefing is Bilski Supreme Court Arguments: Eyewitness Report and Expert Analysis, and CLE credit is available. As always, PLI Privileged Members may attend for free, as they may do with virtually all PLI programs. Those who are not Privileged Members can also join in the briefing for a standard fee. PLI has also decided to make this briefing and other pre-recorded Bilski presentations freely available to any members of the media who may be interested in obtaining a deeper understanding of the issues surrounding this extremely important case.

The Plaintiffs allege that because human genes should not be patented.  Hardly something that anyone can argue.  The only trouble is that this is not what the US Patent Office allows, and it is not what Myriad Genetics has been granted a patent on.  Nevertheless, the frivolous ACLU lawsuit that seeks to use the US Constitution to declare patent claims invalid is allowed to proceed regardless of the facts and in spite of there being no justifiable statutory theory for the plaintiffs to purse.  Instead, Judge Sweet is allowing the plaintiffs to cite generalized Constitutional harm, in direct and open violation of well establish standing principles.  They seek to challenge patents because they want others to be able to use the Myriad Genetics techniques for free and without paying.  They claim that patents control thoughts, and therefore violate the First Amendment.  How ridiculous!

In perhaps the worst opinion I have ever read from any federal court, the United States District Court for the Southern District of New York ruled earlier today that the ACLU challenge against the Myriad Genetics patents and the United States Patent and Trademark Office for issuing patents can proceed. Procedurally the posture was a Motion to Dismiss, which are granted only in rare and extraordinary cases. What makes this decision surprising is that District Court Judge Robert W. Sweet, the 87 year old judge who has been on senior status since 1991 and who was appointed by President Jimmy Carter, recognized that there is no valid basis to bring this lawsuit but allowed it to proceed anyway. Truly amazing!

It is with great sadness that I am writing to inform that Robert H. Rines passed away on Sunday, November 1, 2009.  Bob was a patent lawyer, an inventor and the founder of Franklin Pierce Law Center, where I received both my JD and LL.M. degrees.  He was a fierce advocate for independent inventors, a tremendous patent attorney and world-class inventor.  In the popular press he was known as the guy who chased the Loch Ness monster. Yes, he did go looking for the Loch Ness monster numerous times, famously chasing images of the creature and appearing in several popular TV documentaries on Loch Ness and Nessie.

In chasing the creature he used advanced scanning technology he invented, scouring Scotland’s Loch Ness. According to the National Inventors Hall of Fame, of which Rines was a member – Class of 1994, Rines’ scanning technologies “underlie nearly all the high-definition image-scanning radar used to provide early-warning, weapons fire-control, and some artillery and missile detection radars during the war in the Persian Gulf.”  His ultrasound scanning innovations have been used to search for the shipwrecks of the Titanic and the Bismarck.  While he did have fun looking for Nessie, and more than one graduating class at Franklin Pierce Law Center poked fun at his expense courtesy of the pond in White Park where graduation festivities take place, Bob Rines was in every sense a true Renaissance man.

Last Monday, October 26, 2009, I had the opportunity to discuss gene patents on GritTV with host Laura Flanders. I appeared on the show via Skype video along with David Koepsell, the author of Who Owns You? , who was in the studio. I was supposed to be in New York City with David to debate him at Cardozo Law School, and then over tot he GritTV studios, but I was unfortunately under the weather and unable to make the trip. Thankfully the producers were able to connect us via Skype, and I was able to down some DayQuil and manage to get through the 12 minute segment, which appears below.  I think this segment came out quite well, and Flanders did an excellent job.  Before the tape started rolling she told us both that after reading the material we both submitted she didn’t know what she believed, because both sides raise good points.  I think you will see she did a very even handed job, and I hope she picks up with this more in the future.  It was clear she did her homework and facilitated a fair exchange, which is all you can ask for in such a format.