<a href="http://www.sciencemag.org/cgi/content/full/sci;324/5933/1374" target="_blank">http://www.sciencemag.org/cgi/content/full/sci;324/5933/1374</a><br>Science Magazine<br><em>Science</em> 12 June 2009:<br>Vol. 324. no. 5933, p. 1374<br>
DOI: 10.1126/science.324_1374<br><br><h2 name="HEADLINE"><span>Patents: </span></h2>
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U.S. Supreme Court Delves Into What Is and Isn't <span>Patentable</span></h2>
<strong>
Eliot Marshall
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For more than a decade, two entrepreneurs have been battling<sup> </sup>without success to win a U.S. patent on their method of doing<sup> </sup>commodity deals. Last week, the U.S. Supreme Court agreed to<sup> </sup>hear their plea, signaling that it may pounce on the case to<sup> </sup>clarify rules about what is, or is not, <span>patentable</span>. Patent attorneys<sup> </sup>say a decision could affect not just business methods but some<sup> </sup>biotech claims and process inventions.<br>
<br><br>The business duo, Bernard Bilski and Rand Warsaw, have been<sup> </sup>jousting with the U.S. Patent and Trademark Office (PTO) since<sup> </sup>the late 1990s because it refuses to award them a patent on<sup> </sup>their idea for buying and selling bulk materials, such as coal,<sup> </sup>while hedging their bets with contracts at different prices.<sup> </sup>PTO rejected this "invention" as too abstract—it doesn't<sup> </sup>even include an algorithm—and the top U.S. patent court,<sup> </sup>the Court of Appeals for the Federal Circuit (CAFC), upheld<sup> </sup>the rejection.<sup> </sup><p>
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</p><p>The news that the Supreme Court has agreed to hear this case<sup> </sup>jolted legal experts last week. Hans Sauer, associate counsel<sup> </sup>for the Biotechnology Industry Association (BIO) in Washington,<sup> </sup>D.C., says it's a "big deal" and has snapped "most patent attorneys<sup> </sup>in the country" to attention. For BIO members, Sauer sees a<sup> </sup>risk that the Supreme Court—which hasn't ventured into<sup> </sup>the territory of what is <span>patentable</span> in a couple of decades—could<sup> </sup>come up with a new definition that excludes certain diagnostic<sup> </sup>procedures or techniques to analyze genes, chemicals, or other<sup> </sup>natural phenomena. Physicians' groups, on the other hand, view<sup> </sup>such restrictions more favorably because they fear patents may<sup> </sup>limit access to diagnostics.<sup> </sup></p>
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</p><p>The biotech industry's concern is justified, says Christopher<sup> </sup>Holman, a law professor at the University of Missouri, Kansas<sup> </sup>City, and former pharma biochemist. He notes that the Bilski<sup> </sup>patent was rejected by CAFC because the judges said it did not<sup> </sup>involve a machine or a process that transforms a material from<sup> </sup>one thing to another. Since then, this logic has been used by<sup> </sup>a lower court to reject a biotech patent on vaccination scheduling;<sup> </sup>the court said simply that it violated the Bilski rule. Now<sup> </sup>CAFC is poised to decide about another biotech patent, this<sup> </sup>one held by Prometheus Laboratories of San Diego, California,<sup> </sup>on setting doses for the immune suppressant drug azathioprine.<sup> </sup>It's been challenged on grounds that it violates Bilski and<sup> </sup>is based on natural phenomena.<sup> </sup></p>
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</p><p>Holman has joined four academics in an amicus brief to CAFC<sup> </sup>saying that judges need to be cautious in knocking down such<sup> </sup>patents: They should not call a person's response to azathioprine<sup> </sup>a natural phenomenon, for example, because the drug itself isn't<sup> </sup>natural. BIO also weighed in with a brief to CAFC, arguing that<sup> </sup>"significant and important sectors of the biotechnology industry"<sup> </sup>could be harmed if the Bilski logic is applied too broadly.<sup> </sup>Meanwhile, the American Medical Association and six other medical<sup> </sup>groups have filed a brief on the opposite side, arguing that<sup> </sup>the Prometheus patent should be rejected because it is abstract<sup> </sup>and based on natural phenomena.<sup> </sup></p>
<br>The Supreme Court's review of the Bilski case could set the<sup> </sup>ground rules for deciding this case and others involving biotech<sup> </sup>and analytical process inventions. The court hasn't set a date<sup> </sup>for accepting briefs but could do so as soon as this fall.<br>
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