Cops and Patent Attorneys – You Can’t Find One When You Need One

Submitted by patentadmin on Tue, 01/12/2010 - 17:07

Some weeks ago, we wrote about a suit seeking a declaration that patents on genes are unconstitutional and, in particular, violate the plaintiffs’ right of free speech - The ACLU – Fighting The Right To Life – And The Right To Patent It. At that time, the defendants – the USPTO and Myriad Genetics Inc. – had moved to dismiss the case because, inter alia, it allegedly failed to state a legally recognizable claim of any constitutional violation. A federal judge, however, had denied the motion.

The USPTO – apparently believing that argument alone will suffice and that no evidence is required – has moved for judgment on the pleadings. The plaintiffs – also eschewing any facts – have moved for summary judgment. The USPTO’s brief – it actually is brief, only 24 pages – has now been published. Although, like all legal briefs, this one presents only one party’s side of the story, it does set forth some interesting arguments.

Firstly, it is noted that the “plaintiffs incorrectly contend that the IP Clause (Article 1, Section 8, Clause 8 of the Constitution) requires that patents promote the progress of science. To the contrary, the IP Clause ‘authorizes the Congress to ‘promote the Progress of … useful Arts’” (details, details). The Supreme Court has previously held that “it is presumed” that patents promote the progress of the useful arts because their disclosures ‘add to the general store of knowledge’.”

Secondly, “[p]laintiffs’ arguments also fail because they are premised on the incorrect notion that patents on isolated and purified genes are patents on ‘information’.” (It would appear that someone on the plaintiffs’ legal staff is possibly confusing patents and copyrights.)

Next, the USPTO, wisely distancing itself from Myriad, argues that the fact that a patent might be difficult to “design around” does not make it invalid. “If plaintiffs are correct that Myriad’s patents cover ‘abstract ideas’ or that the USPTO has ‘given exclusive control over certain thoughts to a single company’ – they will be able to establish this in their case against Myriad, and any offending patents will be deemed invalid as not meeting the statutory requirements of 35 U.S.C. §101.”

Finally, the PTO argues that the “plaintiffs’ First Amendment arguments are based on the mistaken premise that genes are simply ‘information.’ They are not. As the U.S. Court of Appeals for the Federal Circuit has held, ‘a gene is a chemical compound, albeit a complex one’.” “Claims to isolated and/or purified genes do not embrace genes as they are found in nature or their functions in the natural state.” (The PTO Guidelines specify “[a] patent on a gene covers the isolated and purified gene but does not cover the gene as it occurs in nature.”)

The decision in this case should be interesting. It will certainly be of immeasurable significance to the pharmaceutical industry.

THE LESSON TO BE LEARNED: There are apparently no patent attorneys on the A.C.L.U. staff.

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