Patent Law Practice Center

Patent News from the Holiday Week

Last week, we in the United States celebrated the Fourth of July, which landed right in the middle of the week on Wednesday. Having a national holiday on a Wednesday typically leads to many taking vacation time and creating their own very long holiday weekend. So while you were away, or perhaps distracted by the scalding hot heat that more than half of the United States suffered from, there were a number of noteworthy patent stories. Yes, decision makers and deal makers did not take a break last week. Not by a long shot.

So while you were otherwise occupied, what did you miss? Here is a run down of five of the most noteworthy stories from last week.

 

1. WIPO Under Fire For Sending Computers to UN Sanctioned Countries

Earlier this year, the World Intellectual Property Organization (WIPO) came under fire for sending computers to North Korea in violation of United Nations sanctions. See WIPO Embroiled in North Korean Computer Deal. Now WIPO is under fire again. It seems they not only shipped computers to North Korea, but also shipped computers to Iran as well. Congresswoman Zoe Lofgren (D-CA) called this latest WIPO transgression “an outrage.” The United States Department of State is attempting to work with WIPO to make sure that new procedures are put into place to ensure this never happens again.

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Machine-Or-Transformation Test After Myriad: Implications To The Prosecution Of Process Claims

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, recently sent in this article he wrote with colleague’s Josephine Liu and Stacie Ropka discussing recent case law on the patentability of process claims.

Not all inventions are patentable.  The Federal Circuit recently handed down its decision in Myriad[i] and the Supreme Court will be hearing Prometheus[ii] in the term beginning in October 2011.  The issues in both Myriad and Prometheus highlight the difficulty in determining when a claim directed to a process is patentable subject matter under § 101, a determination that is particularly troubling in many inventions related to the life sciences.

A first step for granting a patent is determining whether or not a patent application claims patentable subject-matter.  In a line of cases from the late 70s to early 80s and reaffirmed in 2010, the Supreme Court explained that 35 U.S.C. § 101 is to be interpreted broadly and has articulated only three exceptions to what is patentable:  (1) laws of nature; (2) physical phenomena; and (3) abstract ideas.[iii] With respect to process claims, the line between patentable “processes” and unpatentable principles or abstract ideas is not always clear.  The Supreme Court has yet to provide a concrete test by which such a distinction can be made.[iv] It did, however, provide a hint in Gottschalk v. Benson stating that “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”[v] From this pronouncement, the Federal Circuit formally presented and applied the machine-or-transformation test in In re Bilski.[vi] (more…)