Replies to post #38196 on Biotech Values

[DewDiligence]

>This is going to be a big deal.<

The potential ramifications are colossal, particularly with respect to the myriad forms of “lifecycle management” patents used to extend patent protection for drug franchises.

[north40000]

Patent Office issuance of patents[not so OT]:

Some sobering thoughts.

In about 1959, patent no. 2983606 was issued.

Sometime in 2000, patent no. 6,000,000 was issued.
Approximately 3,000,000 patents issued in all the years since examination began in 1836 or perhaps since 1790 when Thomas Jefferson as a cabinet member was one of 3 high level persons examining patent applications.

It took merely 40 years from ~1960 to issue the next 3,000,000 patents. That roughly corresponds to the 1st 40 years of my experience in the patent field---1960-2000.

Patent no. 7,000,000 issued earlier this year--another 1,000,000 patents in just 6 years from year 2000!!!

All the above may be construed as a testimonial to the great strides in innovation post WW II. Also a testimonial to the greatly increased flow of filed patent applications, both from the U.S. and particularly from Asia and Europe. Also a testimonial to the greatly increased nos. of patent attorneys and agents registered to practice before the PTO.

And just think---before 1980 there were few biotech patent applications filed, much less patents issued. About 6 enzyme chemists from the food art examined them. Then the Diamond v. Chakrabarty case was handed down by the Supreme Court in 1980
and the basic Cohen-Boyer patent issued shortly thereafter.
The influx started. The PTO had to hire scads of new examiners, mostly Ph.Ds, and train them to examine fields that had largely been ignored 'til then. Up to 1980, those with biology background + law had been denied registration to practice before the PTO for lack of the usual chemical, mechanical or electrical technology that had formed the backbone of previous practitioners.

That is just a start on tracing the source of perceived problems in the patent arena today. BTW, the Supreme Court issued 2 perfectly fine decisions in 1966, Graham v. Johm Deere
and United States v. Adams, from which the CCPA and now the Federal Circuit have drawn in the ensuing 40 years on the question of obviousness. If the Supreme Court today thinks there are problems, it best look at its own front and back doors first, IMO.

Sorry for the rant and history. Dew, I hope you will save this.

[DewDiligence]

Supreme Court Loosens Patent ‘Obviousness’ Test

[This is an excellent ruling that was long overdue, IMHO. The potential ramifications are colossal, particularly with respect to the myriad forms of “lifecycle management” patents used to extend patent protection for drug franchises.]

http://yahoo.reuters.com/news/articlehybrid.aspx?storyID=urn:newsml:reuters.com:20070430:MTFH90766_2...

>>
Mon Apr 30, 2007 2:21 PM ET
By Peter Kaplan

WASHINGTON, April 30 (Reuters) - The U.S. Supreme Court on Monday moved to loosen a key legal standard used in patent cases, potentially making it easier to invalidate some patents on the grounds they are obvious.

In a decision applauded by software and technology companies, the justices unanimously said the courts should be more flexible in the way they interpret the standard governing whether patents are valid or merely "obvious" combinations of previous inventions that should be rejected.

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility," the court said in its opinion.

The case has been keenly watched by industries that rely heavily on patents, such as the pharmaceutical, biotechnology and software industries. Obviousness in the most common ground for the U.S. Patent & Trademark Office to reject a patent.

The patent in dispute, held by Teleflex Inc. <TFX>, combines two existing inventions: an adjustable pedal and an electronic throttle control. It was ruled obvious and invalid by a federal district court after a lawsuit was filed by Canadian manufacturer KSR International.

But the U.S. Court of Appeals for the Federal Circuit, a court that specializes in patent cases and established the obviousness test, overturned the decision, saying the combination could not be considered obvious under its long-standing test.

The federal circuit's test says a patent combining two previous inventions can only be deemed obvious if some earlier "teaching, suggestion or motivation" existed to make the combination.

KSR appealed to the Supreme Court, arguing that the way the federal circuit court was applying the test contradicted previous Supreme Court rulings and made it too easy to defend an obvious patent.

In its decision on Monday, the Supreme Court said KSR had provided "convincing evidence that (combining the sensor and pedal) was a design step well within the grasp" of engineers who designed throttle pedals.

The high court said the "teaching-suggestion-motivation" test was "helpful" in determining obviousness but "helpful insights however need not become rigid and mandatory formulas."

The case was sent back to the federal circuit appeals court for further proceedings.

The decision was the latest in a series of rulings in which the Supreme Court has sought to curtail the use of patents.

Trade groups representing software and technology industries have argued the patent system gives too much power to patent holders, many of whom do not sell any products but seek to make money by suing profitable companies.

"There will be a better opportunity for (patent office) examiners to weed out applications that are not worthy of getting patents," said Emery Simon, a lawyer for the Business Software Alliance.

Washington patent attorney Stephen Maebius said the KSR decision was part of a broader effort by the Supreme Court to interpret patent laws more flexibly.

"They want to remind courts that there's flexibility there to find obviousness even if there's not an explicit teaching, suggestion or motivation," Maebius said.
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