U.S. patent law mission creep needs to be reversed

November 17, 2011

By Reynolds Holding

The author is a Reuters Breakingviews columnist. The opinions expressed are his own.


The U.S. Supreme Court has a chance to reverse the mission creep in patent law. The system is supposed to reward inventors but not stifle innovation. Fuzzy and overly broad concepts like thought processes generally aren’t protected. Yet one company, Prometheus Laboratories, reckons it owns a method for interpreting how patients react to a drug.

Thomas Jefferson, the first U.S. patent commissioner, questioned whether ideas should be owned at all. In 1840, a skeptical court limited patents to specific inventions. The Supreme Court followed suit in 1853, rejecting a claim from Samuel Morse. The justices said Morse, the inventor of the telegraph, had sought patent protection so broad that it would block discoveries he had not even thought of.

That principle guided American law for more than a century. A crack appeared in 1972, when the high court first considered software patents. Even then, though, the justices ruled them invalid unless tied to a specific use. But by 1994, the U.S. Court of Appeals for the Federal Circuit, the nation’s top patent court, was blessing protection on virtually any software with a practical purpose.

The court may have been trying to promote technological advances. But the real-life effect was to gut the rule that had prevented the patenting of abstract ideas in areas like medical research.

In 2004, Prometheus claimed the Mayo Clinic had infringed a patent on a seemingly simple process for diagnosing patients. The procedure was the kind of analysis based on observation that doctors do every day, the clinic complained. But the Federal Circuit upheld the patent. The case is due at the Supreme Court next month.

The seven years of litigation are one cost of a broken system. The number of federal patent infringement lawsuits has soared, from about 800 in 1980 to more than 3,300 last year. Legal experts say the suits have cost companies hundreds of billions of dollars a year.

But the greater expense may be lost innovation. The risk of getting sued discourages research investment and delays medical breakthroughs – the opposite of what the patent system’s designers intended. Reversing years of damaging precedents is hard, but a Supreme Court ruling against Prometheus would be a start.


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I object to concept patents.

If someone creates code for something that’s patentable, but not the concept itself.

The reason for this is often times, the implementation of a concept is poor, even if it’s the first time it’s done. All well and good and the people who worked to make that concept happen should be rewarded for making it happen – not necessarily for the idea itself.

Others can come along and implement the same concept in different ways – more efficient code, more efficient implementation, unique uses of that implementation, etc. THEIR code can be patented, but not the idea itself.

Using a certain code for a certain process or implementation is patentable. But not the process or the implementation because someone can come up with a better use, process or implementation and write code for that on their own, or buy a license to use what was already developed.

The way it is today, if software were mousetraps, we’d not be able to make any others without paying a royalty because the IDEA of trapping mice would have been patented.

Posted by Fatesrider | Report as abusive

I’m afraid this column misunderstands the Prometheus case before the Supreme Court. The issue is not whether the invention is too simple, but whether it should have been considered at all as proper subject matter for patent protection.

That threshold question is important because it carries a risk of excluding technologies that we cannot yet imagine. It does exclude abstract ideas, but there is nothing abstract about this patent: it spells out concrete steps for a doctor to follow. That is sufficient for the invention to be considered, no matter what the verdict may be on the simplicity of the invention.

Prometheus is about the threshold question of subject matter, which is a “course filter” that is followed by a detailed inquiry of novelty, nonobviousness and adequate disclosure of the invention. This patent may be rejectable based on the latter, but not based on the former.

William Barber
American Intellectual Property Law Association

Posted by jcrowne | Report as abusive