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Patently not logical   

17 November 2011 By Reynolds Holding

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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