Insiders React to Supreme Court Prometheus Decision

Just over three weeks ago the United States Supreme Court issued a decision in Mayo Collaborative Services v. Prometheus Laboratories, which sent much of the patent world into a whirlwind.  In that decision the Supreme Court unanimously found that the claims at issue did not exhibit patent eligible subject matter because the additional steps that were added to the underlying law of nature were well known in the industry.  A curious ruling for many reasons, and one that will have to be digested over many years as the United States Patent and Trademark Office and the Federal Circuit struggle to figure out how Diamond v. Diehr remains good law (it was not overruled) and remains consistent with a ruling that seems completely inapposite.

To continue to provide a variety of perspectives on this landmark ruling what follows is the reactions of those in the industry. Without further ado…


Elizabeth J. Haanes, Ph.D.
Director at Sterne, Kessler, Goldstein & Fox PLLC

A dissection of most any patent claim will reveal, at some level, a law or a product of nature. The holding in Prometheus does not hinge on whether a naked “law of nature,” e.g., gravity, is patent-eligible–clearly it is not. Rather, the question we will be grappling with in the coming years is: what additional elements must be included in the claim to render the claim sufficiently “unconventional” or “inventive” so as to confer patent-eligibility? The claims in Prometheus, included steps in addition to the “law of nature” that were determined by the Federal Circuit to be transformative. The Supreme Court, however, concluded that the steps were insufficiently “unconventional” to confer patent eligibility. In contrast, the Court distinguished a patent-eligible “law of nature” claim in the landmark 1981 Supreme Court case Diamond v. Diehr as “add[ing] to the [law of nature] something that in terms of the patent law’s objectives had significance–they transformed the process into an inventive application of the formula.” (Prometheus. at p. 12).

The Court provides us with little guidance as to how much must be added to the “law of nature” to confer the requisite “significance.” At the outset one can compare the elements of the claim in Diehr with the elements of the claim in Parker v. Flook to derive some broad boundaries of the universe of patent-eligible subject matter. From this comparison comes a suggestion that specific and tangible “post-solution activity,” e.g., opening a mold at the appropriate time determined through use of the Arrhenius equation in the Diehr claim. In contrast, the “post solution activity” in the claim at issue in Flook, setting new alarm-limit values in response to the results of a mathematical algorithm, was determined to be insufficient. But is “post-solution activity” always required? The answer is unclear. Perhaps if the “pre-solution activity” rises above being “conventional or obvious,” “post-solution activity” will not be required.

Prometheus stands for the proposition that a naked “law of nature,” even a newly-discovered novel and non-obvious “law of nature,” will not be eligible for a patent. On the other hand, a claim reciting a “law of nature” will be patent-eligible if the remaining elements or combination of elements in the claim are patentable. The Court rejects the suggestion of the United States as Amicus Curiae (and many other commentators) that the other provisions of the patent statute (e.g., novelty, nonobviousness, and meeting the enablement and written description requirements) are better suited to screen out unpatentable subject matter. (Prometheus at p. 21). But on some level, aside from the “law of nature,” isn’t this exactly what the Court has done?


Ryan Chirnomas
Partner, Westerman, Hattori, Daniels & Adrian, LLP

The most frustrating aspect of this decision was the Court’s the importing of a section §§102/103 analysis into a §101 analysis. In essence, the Court said that the method does not involve the hand of man (§101) because the primarily elements of the method are things that man has done many times before (§§102/103). Instead, the proper analysis should have been that urged by Judge Rader and the USPTO-first examine compliance with §101, then move on to §102, §103 and §112. However, the court has very clearly spoken, and has left little for patent practitioners to grasp on to. While we can apparently still argue that the steps used in a diagnostic are not conventional, in most situations this will be extremely difficult.

An open question is whether this reasoning will be applied in other contexts, such as composition claims. If the Supreme Court eventually hears the Myriad case, perhaps it will apply a similar reasoning: the isolated DNA does not involve the hand of man (§101) because it was obtained primarily by steps that man has done many times before (§§102/103). One can even imagine a similar analysis where the claimed composition is a conventional vector including a DNA sequence, rather than just the isolated DNA sequence.

Another open question is the effect of this ruling on the diagnostics industry and health care in general. This decision is good news for doctors, patients and insurance companies in the short term. But in the long term? It is hard to say whether, with the reward of patent protection possibly no longer available, life sciences companies will continue to innovate in diagnostics and personalized medicine. Sure, there are other ways to incentivize invention, such as through government prizes or regulatory exclusivity. But while the patent system is by no means perfect, it is the most transparent and equitable system for government to promote development of technologies which make the world a better place. With Prometheus, the best innovation incentive system ever known took a significant hit.

For more from Chirnomas please see Supreme Court Strikes Down Diagnostic Method Claims.


Brian Stanton, Ph.D.
Vice-President & Director of Consulting, The REDNA Group
Former Director of the Division of Policy NIH Office of Technology Transfer

For better or worse, medicine is a business. Long gone are the days of the general practitioner’s little black bag and a doctor arriving at your child’s bedside. Oh, perhaps there are towns and villages where healers are satisfied by kind wishes, baskets of produce, a quilt, or simply a promise to pay. But doctors have families, mortgages, tuition payments (and yes, even some greens’ fees) to pay. Similarly, clinics and hospitals must make their loan payments or risk foreclosure. Bank managers are unlikely to accept the potential of a future house call or gall bladder surgery in lieu of payment on their debt. Wholesale delivery of medical services cannot be maintained if practitioners’ rewards are denied.

The more we push through Hamlet’s “thousand natural shocks that flesh is heir to” the greater the need for more efficient diagnoses and treatments. Mayo v. Prometheus highlights these needs but the Court’s finding belies means of fulfilling them. In denying patentees’ short-term reward for their medical efforts, they continue to reject that medical technologists require economic return. Altruistic motives aside, navigating the valley of death that lies between research and applications that benefit society requires resource concentration that has been most efficiently applied through the IP system.

In patents, the name of the game is the claim. In Prometheus, the Court impugned the claims as in-artfully drafted and insufficient to evidence the hand-of-man (so long held as the gold standard of patent eligibility). The researchers efforts at defining clinical benchmarks has been denied economic reward for the limited time promised by the Founders. In nullifying the first step in clinical application of medical discoveries, the Court denies the economic realities of modern medicine. Nine persons in need of medical attention seem to have set back access to efficient treatment at the very moment that we face a crisis in providing even basic remedies.


Hans Sauer, Ph.D., J.D.
Deputy General Counsel for IP, Biotechnology Industry Organization

We are surprised and disappointed in the Court’s decision, which disregarded the considered judgment of the Executive Branch experts and numerous amici such as BIO, who warned about the unintended consequences of attempting to use patent eligibility as a basis to strike down these patents for biomarker-based diagnostic methods.

While we are still analyzing the opinion, we are concerned that it introduces new and confusing concepts into the traditional body of patent law, which patent examiners and lower courts will struggle to consistently and rationally implement. While the opinion’s lack of guidance may limit its practical impact, we are troubled that the Court’s opinion fails to appropriately recognize the importance of personalized medicine, and of the research and investment incentives needed to develop new individualized therapies for untreated diseases.

BIO will work with the Administration and the U.S. Patent and Trademark Office to ensure that the future application of this opinion does not irrationally restrict the ability of innovators to protect inventions that lead to cures, medical breakthroughs, and other technologies that make our lives and our environment cleaner, safer and healthier.


Dale Halling
Patent Attorney, Halling IP
Patent Blogger – State of Innovation

My input on the Prometheus case is based on the logical implications of the Court’s ruling and my suggestion as to how 101 could be approached.  I will leave the nuanced interpretations and paths forward to brilliant attorneys such as Eric Guttag and Gene Quinn.

Logically, the Supreme Court is saying that known steps or elements in combination with a law of nature (technically, this case involved natural phenomenon, not a law of nature as pointed out by Robert Sachs) is not patent eligible.  First, every invention ever made involves steps (elements) that were known individually before the invention plus laws of nature.  You cannot create something out of nothing.  Section 112 means that you have to be able to describe your invention in terms known to those skilled in the art.  Thus the Supreme Court’s holding means that any invention that satisfies 112 is unpatentable under 101.  The only inventions that will satisfy 101 are those that violate laws of nature or involve creating
something out of nothing.  The question in 101 is whether a claim covers an invention.

Anything that man creates to solve an objective problem (non-objective creations are the subject of aesthetics/copyrights) is an invention.  If a device/service is not found in nature separate from man, then it satisfies 101.

The Prometheus claims are a method of treating Crohn’s disease (auto-immune diseases). There is no method of treating Crohn’s disease in nature, other than letting the disease take its natural course. Here, Prometheus’ claims require a patient to take a drug and test a patient’s metabolites. This is done by man for the objective purpose of treating auto-immune disease.  This is clearly within 101.

For more from Halling please see Supreme Court ‘Only Black Magic Patent Eligible’.


For our continuing coverage of this case please also see:

From other blogs:


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Join the Discussion

25 comments so far.

  • [Avatar for jon]
    April 16, 2012 06:04 pm

    patents promote and encourage innovation. without patents there would be no economic incentive to innovate because your inventions would be stolen and become public property. Then, your competitors will try to out-complete everyone by aggressively cutting labor costs.

    it seems that judges are tackling identical patent issues with different/subjective reasoning instead of applying the objective or commonly understood standards to all the cases. i am not sure if this means there is more judicial corruption/activism.

  • [Avatar for Art]
    April 14, 2012 07:52 am

    Everybody knows that patents increase innovation. Can you guys write more articles explaining why patents increase innovation? There is an article that claims that patents decrease innovation, which is hilarious – they have no evidence whatsoever!: These people have absolutely no objective factual evidence for showing that patents are harmful! Unbelievable.

  • [Avatar for Paul Cole]
    Paul Cole
    April 13, 2012 05:59 pm

    For the avoidance of doubt, and as noted by Dale Halling, I was not remotely suggesting that Elizabeth Haanes took anything from my Patently-O post. What I took pleasure in was the fact that she and I and another senior UK person had INDEPENDENTLY analyzed Mayo and concluded that there in no principle of any particular utility beyond the bare facts of the case itself. It is the fact that a number of commentators should have reviewed the opinion and INDEPENDENTLY reached much the same conclusion that lends that conclusion greater weight. In my opinion it should be regarded as a one-off without any new teaching for subsequent cases. Indeed Justice Breyer made that very point at the end of his opinion.

    Normally great deference is to be given to the Supreme Court and it has handed down some marvelous and insightful decisions in our field, of which Festo is a prime example. Many nineteenth century opinions make good reading, even nowadays. But every court finds that some of its opinions carry great weight and are influential decades, if not centuries later, and others are rapidly and deservedly forgotten. In the UK, our House of Lords has handed down many decisions affecting patents, of which very few are cited nowadays. It is difficult to foresee [I am captured by the logic of Festo] that Bilski will be hailed in 100 years time as one of the great milestones in the development of patent law, and we can be reasonably confident that Mayo will also be treated by future generations with benign neglect. So why is this decision so deserving of comment? In truth to try to persuade decision-makers in the USPTO and elsewhere that there really is nothing in the decision that deserves reaction or change from existing practice.

  • [Avatar for Gene Quinn]
    Gene Quinn
    April 13, 2012 12:08 pm


    Perhaps you are right, but after the comment he put on a software article suggesting that I didn’t know what I was talking about I wasn’t so sure.


  • [Avatar for EG]
    April 13, 2012 11:26 am

    At least one instance, Ex parte McCardle. From the Wikipedia entry:

    “During Reconstruction, Congress withdrew jurisdiction from a case the U.S. Supreme Court was then in the process of adjudicating. In terminating the case Ex Parte McCardle, 74 US 506 (1869), the Justices acknowledged the authority of Congress to intervene.”

  • [Avatar for American Cowboy]
    American Cowboy
    April 13, 2012 11:12 am

    EG, you have stimulated my curiousity. Has Congress ever taken jurisdiction away from Scotus before? I don’t mean just on patent cases, but any type of case?

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    April 13, 2012 11:08 am

    EG-here, here!

  • [Avatar for John White]
    John White
    April 13, 2012 11:03 am

    EG: Precisely. John

  • [Avatar for EG]
    April 13, 2012 10:15 am

    No problem, AC. And you should also hear the “howls” when I’ve suggested Congress could restrict the ability of SCOTUS to review patent cases.

    Let me make this clear too: my problem with SCOTUS is not that they review patent cases, but instead, that they now rule essentially despotically in patent cases, essentially divorced from consideration of the patent statutes, any appropriate suggestions from the Executive Branch (i.e., the U.S. Solicitor General), show a basic lack of understanding of basic patent law facts (including basic patent claim terminology), treat the Federal Circuit now in a most unprofessional manner, as well as denigrating constantly what we patent practitioners do, provide minimal, if any, guidance, on how to resolve future patent law disputes because the reasoning in their opinions is illogical and worse yet, often conflicting, and continually use their own brand of “SCOTUS patent law” that no one (even they) can apply rationally, consistently, and objectively. When our Judicial Mount Olympus simply hurls “thunderbolts” at the Federal Circuit and patent practitioners to upset the patent law “applecart” without putting in place any rational and objective precedent, that doesn’t earn my respect, only my scorn.

  • [Avatar for TINLA IANYL]
    April 13, 2012 10:15 am

    I’ve finally had time to go through the opinion myself and pay attention to the Court’s discussion of Diehr and Flook. I don’t think they overruled Diehr. They don’t seem to me to have gone back to the type of dissection in Flook that Stephens clearly would have wanted (based on his dissent in Diehr wanting an entirely new machine to be in the claim absent the algorithm). Rather, it seems like they are saying that Diehr’s prohibition against dissecting the claim into old and new elements cuts both ways. Just as you can’t point to the useful elements and say ” nothing new,” you also can’t point to those elements and say “utility.”

    In Diehr, the old electromechanical elements are configured to operate in a new way via the algorithm. So in considering the claim as a whole, and not dissecting out the algorithm, there is a new and useful application. In Flook, the formula, though new, does not result in a new application of anything, because no application was recited. The claim in Mayo v Prometheus, considered as a whole, does not apply the old test in a new way because the mental correlation, though new, is just a mental step. To me, that doesn’t seem so bad, at least not for software, methods of treatment, machines that generate reports indicating whether test results exceed a threshold, etc.

    I can see why pharma wants a way to stop competitors from selling their old tests for the new purpose, or labs from using anyone else’s kit for tests for the new purpose. And maybe there’s a good policy argument for encouraging pharma companies to invest in research. I don’t know what is the best solution for meeting those goals.

  • [Avatar for American Cowboy]
    American Cowboy
    April 13, 2012 09:51 am

    Cool, Eric. Thanks for reading the fine print that I was too lazy to look up.

  • [Avatar for EG]
    April 13, 2012 09:41 am

    “Unfortunately, I think the Constitution would prevent Congress from keeping SCOTUS out of patent cases altogether.”

    Not true, AC. See Article III, section 2: “the supreme Court shall have appellate Jurisdiction, both as to Law and Fact, with such Exceptions, and under such Regulations as the Congress shall make.” What this “Exceptions” portion section 2 of Article III relates to is what is called “jurisdiction stripping.” Congress can’t affect SCOTUS’ original jurisdiction, but Congress can (and has) limited SCOTUS’ appellate jurisdiction (as well as that of other federal courts) in cases not involving constitutional questions. So Congress could limit SCOTUS’ ability to review patent cases, including mandating that the Federal Circuit is the only court that can hear appeals in patent cases.

  • [Avatar for John Spevacek]
    John Spevacek
    April 13, 2012 09:25 am

    @John White

    I agree with you entirely, (although you should know that I am merely a PHOSITA, not an attorney). It seems to me that most of the fuss is that the decision of the SCOTUS was written extremely poorly, being vague and contradictory (internally and externally) , even if the overall decision was the correct one.

  • [Avatar for American Cowboy]
    American Cowboy
    April 13, 2012 08:58 am

    Unfortunately, I think the Constitution would prevent Congress from keeping SCOTUS out of patent cases altogether. However, I think it is possible that every time SCOTUS unleashes another load of junk on patent jurisprudence, Congress should be able to legislate clarifications that undo or mitigate the damage. However, that requires political will, which may be difficult to muster given that there are anti-patent forces such as Anonymous who posted above and the mindless “the internet wants to be free” idealogues who have a vote.

  • [Avatar for EG]
    April 13, 2012 08:40 am

    “Unless a consitutional question is present, the CAFC should be the last stop.”

    Completely agree with you on that point, John. I’ve even suggested that Congress mandated that the Federal Circuit be arbiter of patent law jurisprudence when it created the Federal Circuit in 1982, and that the Supreme Court should generally “butt out” when it came to patent cases; you should have heard the “howls” when I said that.

    The current Supreme Court is a “patent hostile” as it was back in the 1970’s. Their reasoning is not only circular, but illogical, frequently divorced from what the patent statutes say, and, as blatantly evidenced in Mayo Collaborative Services, completely misuse and misunderstand basic patent claim terminology. If you can’t get the basic patent claim terminology facts straight (i.e., “wherein clauses” are not “steps”), why is everyone surprised that patent practitioners are upset by nonsensical legal reasoning employed by the Supreme Court?

  • [Avatar for step back]
    step back
    April 12, 2012 09:49 pm

    Gene, I need a release from your spam jail. Thanks. 😉

  • [Avatar for step back]
    step back
    April 12, 2012 09:48 pm

    John W: you are not alone.

    However, dissecting the gibberish put out by the SCt and showing how each piece is factually, scientifically and logically faulty is a long and unrewarding row to hoe.

    See here:

    As Dale above notes: “First: Patents are property rights they are not a monopoly”, this being more true especially after the SCt’s eBay decision. However, in Mayo, the SCt repeats the false myth that a patent equals a monopolization over just about everything (with no need for claim construction). See also SmartGenes v. ABL as discussed here:

    It’s only just begun …

  • [Avatar for John White]
    John White
    April 12, 2012 07:58 pm

    Once again: why I am I the only person who questions the legal competence of the S.Ct. to review patent cases in the after math of the creation of the CAFC? The CAFC creation was based on the absolute mess the S.Ct. had made of patent law. Its own echo chamber of circular precedent had run the entire patent system (a constitutionally based requirement of our government) into a ditch. The CAFC resuscitated the system thru the 1980’s and early 90’s, and now the S.Ct. returns to its own echo chamber of precedent and runs it back into the ditch. Only specific legislative intervention can save the patent system from the S.Ct. By their own reliance on precedent that doesn’t work, they cannot escape on their own. Their antipathy towards patents began in the last half of the 1800’s and has kept going, abated only by their reluctance to ever take a patent case and show what little understanding they have for this area of the law. The decision here, like in KSR, is not necessarily wrong. But, the words and reasons they use to get to the outcome are an abomination. Unless a consitutional question is present, the CAFC should be the last stop. Period.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    April 12, 2012 05:58 pm


    I do not believe Paul meant that Elisabeth took his ideas, I think he meant that two well informed professionals in this area came to roughly the same conclusions.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    April 12, 2012 05:56 pm


    Clearly you do not understand, patent law, science, or free markets.

    First: Patents are property rights they are not a monopoly
    Second: Conservation of matter means you cannot create something from nothing
    Third: Free markets depend on strong property rights. Without strong property rights you have anarchy.

  • [Avatar for Anonymous]
    April 12, 2012 03:05 pm

    No wonder the legal landscape is such a quagmire. First of all this:

    In denying patentees’ short-term reward for their medical efforts, they continue to reject that medical technologists require economic return. Altruistic motives aside, navigating the valley of death that lies between research and applications that benefit society requires resource concentration that has been most efficiently applied through the IP system.

    … is a shameful and patently false (pun intended) argument in discussing matters of scientific discovery. At its core it asserts that patents and resource concentration somehow drive the free market. This is an embarrassingly naive assertion at best and total disinformation at worst. Furthermore it has no relevance to what constitutes an invention or doesn’t.

    FACT: The function of the human body is inherent to nature, as is its evolution. Making a novel compound to change the overall function of certain systems is patentable. You have created something new that drives a biological mechanism to a new end.

    FACT: Finding a gene that does something that we didn’t know it did is NOT an invention. Synthesizing that gene in a lab using existing means is NOT an invention. Finding a new approach to quantifying or predicting its behavior using a series of steps involving pre-existing technologies is NOT an invention. Chiron waited ~2 years to pursue a patent on PCR because it involved nothing more than a new way of doing things they already had the materials and capability for doing. It was only because it embodied a methodology far from anything anyone was doing at the time that it was patented. But the fact is the polymerase chain reaction itself is inherent to nature. Nonetheless with a patent behind it Roche was happy to pay $300 million for it, reap billions in licensing, and thus increase the costs of genomic therapies to today and beyond. The author’s assertions that this somehow served the greater good, and the inventor got only his just reward are utterly absurd. A quick read of Cary Mullis’s view on the whole situation destroys this position.

    Today EVERYONE is looking for genes to patent. Sure you can say:
    “Prometheus’ claims require a patient to take a drug and test a patient’s metabolites. This is done by man for the objective purpose of treating auto-immune disease. This is clearly within 101.”

    Save for the fact that Genetope and Biovest have been using a near identical methodology to treat lymphoma for nearly a decade. And the ultimate functional component is still nothing more than natural bodily function. If the drug is unique then maybe there is a claim, but the overall treatment is recycled and totally unoriginal. This is no different from dropping an egg off a building, looking at it through a telescope then trying to patent the telescope as part of a “gravity diagnostic”. The key component of the invention, gravity, was pre-existing, as was the means for observing it.

    “If a device/service is not found in nature separate from man, then it satisfies 101.”

    What is Prometheus’s device or service? Nothing. They use pre-existing devices, and methodologies to observe a service that is performed by naturally inherent immune function. Simply turning it on is no trick either. There are foods that do as much. Is eating patentable? No. In fact this same establishment actively seeks to ban nutritional supplements. So this argument is farce.

    The profit motive is deeply corrupting medical science. We know for a fact that many cancers, obesity, alzheimers, autism, and many other conditions were nearly non-exsitent in the pre-industrial era. We could cure most of them by removing known toxic substances from our food supply. There are peer reviewed studies showing that THC has antitumor effects, yet the legal-medical establishment has gone to extensive lengths to hide these truths from view. Instead they indulge in junk science to promote monopolies on causes and cures instead. Then hire high priced litigators to make any inane argument they can to force them upon us the same way they legitimized the same poisons that caused these conditions in the first place. All while subduing known, naturally occurring cures. There is no justified or fitting reward for simply using half hearted science to this end. The law is force in action. Science is truth in action. These two concepts and diametrically opposed. Scientific monopolies bought at the intersection of the legal establishment and healthcare establishment are neither scientific or inventive. No factually bankrupt rational justifications will ever change that. The law is on the side of money, not pure scientific advancement or the general welfare. Otherwise they would reject monopolies on IP in this arena compeltely. The trajectory if IP in medical affairs directly correlates to a rise in not-ready-for-primetime drugs and out of control costs. It’s hard to accept any rationalization from a legal establishment that fails to acknowledge these facts while arguing their opposite.

  • [Avatar for Gene Quinn]
    Gene Quinn
    April 12, 2012 01:58 pm


    Elizabeth sent her remarks to me two weeks ago, which is before Paul’s post appeared on PatentlyO. Any suggestion or implication that she took from Paul’s post to form her own opinions is inaccurate. This post was held to get more input from a diverse segment of the industry.


  • [Avatar for Sean Flaim]
    Sean Flaim
    April 12, 2012 01:54 pm

    I’m not sure what all the fuss is about this case. Honestly, I would characterize the ruling as holding that a “discovery” is not patent-eligible; only an “invention.”

    Let’s look at the basics of the patent here. The crux of the claimed invention revolved around the patentee discovering the appropriate therapeutic range of a drug. No matter how much the claims attempted to dress this discovery up in machine-or-transformation type language, the goal of the claim was to establish a monopoly in the use of that therapeutic range.

    Is the therapeutic range of a drug an “invention?” Of course not, it’s a discovery. Whether you want to classify it as a “natural phenomenon” or “law of nature”, it existed prior to the the patentee making the discovery. It wasn’t the “hand-of-man” that made those numbers significant.

    All of this hullabaloo about “importing 102/103” principles into a section 101 analysis are missing the forest for the trees. If section 102 prevents one from claiming a patent on something that was published or disclosed in the past, section 101 prevents one from claiming a patent on something that already existed in the past, regardless of whether it was ever known, published or disclosed. As Justice Breyer stated, section 101 is a different test – it tests as to whether something is an “invention” (the hand-of-man) rather than a simple “discovery.”

  • [Avatar for Paul Cole]
    Paul Cole
    April 12, 2012 12:29 pm

    It is gratifying to find how closely the analysis by Elizabeth Haanes follows (and much more concisely states) the conclusions suggested in my recent Guest Posting on Mayo on the Patently Obvious blog. I undederstand that a letter to be published in the UK in the CIPA Journal by a further UK patent attorney of some distinction will be making much the same points. If numerous indpendent practitioners in the field point out similar problems with a decision, it can be concluded that those problems are real and not mere individual self-interested or industry-interested carping.