December 16, 2011
Mayo Collaboraive_ Elaboration on Thoughts
The mayo collaborative arguments in the Supreme Court of USA raised some interesting questions in the domain of patent-eligible subject matters. The most important is about the test that distinguishes the Patentable subject matter from the idea or the natural phenomenon. What adds to the nature to make patent eligible subject matter?
Lets try to find out the possible solution of this question and suggestions are welcomed.
The ideas to the extent that they are law of nature or well established principles are not patentable subject matter. So Newton Laws, Mass energy equation and thermodynamic principle are not patentable. However, the application of law of nature is patentable. So a bicycle if is novel and has inventive step and has an utility, based on the principle of Newton Laws of Motion is patentable subject matter.
The question to ponder is when the application of law of nature itself would become the law of nature. Where is the thin line difference and what test to apply.
Human intervention is important parameter that is applied in the arguments of Mayo Collaborative case. In my opinion this test holds good for the most of example. If there is human intervention in the law of nature to make something useful, the matter, prima facie should be patentable.
The other question is what should be patentable, the subject matter as such, or the result obtained by the subject matter. Does the patent on the subject matter extends to the results obtained as well. My answer to this question would be NO. So, whereas the bicycle is patentable in the example given above, the motion obtained from the bicycle is not. If similar motion can be obtained by some other means, like skating board, the board will be patentable subject matter, not the motion itself.
Can the result measurement be patentable? Answer is again, in my view, is NO. There can be no patent on the measurement, as the measurement is merely abstract numbers or the tool to measure. Means to measure the number can be patentable, but not the measurement itself.
In the analogy that Supreme Court has taken various time, for the mass energy equation, the equation itself or the energy obtained through the process regulated by the equation is not patentable, however, If there is some means by which energy can be obtained for useful use, that means is patentable.
In the Mayo Case, the patent claim on range seems to defeat the criteria of subject patentability for two reasons.
1. That they are merely measurements
2. That the opinion based on the measurements are mere opinions.
However, if the defendants could prove that the numbers itself is consequence of calibration (Please note that argument like the calibration is itself a ‘mean’ can’t be ruled out) and not mere measurements obtained as such, the Court might end up with serious thoughts on the defendant arguments.
As far as it goes, looks interesting case in days to come.