Search this site:


March 21, 2006 10:36 AM

Broken: Patents on facts

Michael Crichton on how even thinking a certain fact can, by law, be an infringement of a patent. This is so, so broken.

From This Essay Breaks the Law - New York Times:

Any doctor who reads a patient's test results and even thinks of vitamin deficiency infringes the patent. A federal circuit court held that mere thinking violates the patent. All this may sound absurd, but it is the heart of a case that will be argued before the Supreme Court on Tuesday. In 1986 researchers filed a patent application for a method of testing the levels of homocysteine, an amino acid, in the blood. They went one step further and asked for a patent on the basic biological relationship between homocysteine and vitamin deficiency.


FIRST! Well what about all those times people say "well don't even think about it." This is pretty much inforcing that....I think...

Posted by: Riblet15 at March 21, 2006 11:20 AM

its funny how people are so dedicated to this that they mae it illegial to even think a certain fact because it may infringe on your privacy yet the president can infringe on your rights legally

and break the law

Posted by: yomama at March 21, 2006 11:23 AM

How you know you're living in the 21st century: Hell's Angels are suing Disney for trademark infringement and dilution.

I am not making this up:

Patent, trademark, and copyright laws have become so broken in so many ways.

Posted by: E.T. at March 21, 2006 11:58 AM

Trying to patent a biological relationship? That is funny!

Posted by: Rhaegar at March 21, 2006 01:07 PM

I smell 1984.

Posted by: Haluci at March 21, 2006 01:11 PM

Well whaddaya know. Something I am actually qualified to talk about. Not that that's ever stopped me.

As best I can tell, author Crichton's article is off the mark because he either hasn't read the patent claims at issue, or doesn't understand them. By saying that I don't mean to insult him, because lots of people don't understand patents, but perhaps he should have run his essay past someone who does, or his editors should have done better fact checking. (It would also be helpful to provide a patent number if he's going to talk about a patent, for those who actually want to look at the facts instead of the spin. But it was not too hard to find.)


Claim 13 of patent 4,940,658 reads:

13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.


Metabolite has not exactly "patented a fact." To infringe claim 13 you have to measure something in a bodily fluid, then "correlate" it to another thing. Mr. Crichton can rest easy, he's not going to be sued for infringement any time soon unless he starts assaying bodily fluids. His doctors might be concerned though.

The Supreme Court is going to decide whether this claim violates a patent law called 35 U.S.C. 101 which states simply:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

Beyond this law, there is a whole raft of court decisions that say what you cannot patent, including laws of nature by themselves. That premise is not at issue here. However, patent attorneys are pretty clever about wording and combining things so that something unpatentable by itself can form a part of something patentable.

My take under present law, is that a "process" (that is, a method) of assaying something called A, and correlating elevated A to a deficiency of B, is patentable. That's not to say this is a great result in this case, because it is a pretty lame claim with the step of "correlating" boiling down to something that is an inherent result of mammalian physiology. The second step taken alone wouldn't be patentable. But the way the law is written, I would have to agree that claim 13 is patentable.

The Supreme Court may agree or disagree, that's their job. They may also agree to point out that laws sometimes lead to weird results and Congress should do a better job of writing them. The only problem there is when you ask Congress to change laws there's a pretty good chance that what you'll get will be worse than what you started with.

(disclaimer: "Pat," not his real name, is registered to practice before the U.S. Patent and Trademark Office)

Posted by: Pat at March 21, 2006 02:58 PM

This post is illegal.

On a more serious note, my view on the patent as stated above is that it requires one to actually correlate the level of homocysteine to a defiency of cobalamin or folate. Therefore, to infringe the patent one would have to actually do the research that allows one to correlate the two.

Posted by: Fuzzy at March 21, 2006 03:36 PM

Oh-Man, I was just going to say that.

Posted by: Danny Crane at March 21, 2006 03:37 PM

Hooray for Crichton for exposing this. man, that aint right. its a concept monopoly

Posted by: Char at March 21, 2006 09:40 PM

any law telling us to not think something is stupid. Its as hopeless as me saying "Don't think about purple elephants." What's the first thing that comes to mind? Purple Elephants! Case closed.


P.S. How would they prove it anyways? Lie detectors are not considered a realiable means to prove anything in court, and last I checked, nobody invented a mind-reading machine.

Posted by: Julo at March 22, 2006 02:05 AM

Pat: You say that Crichton is off base, because the "natural law" is not the issue. However, he states in the first few paragraphs:

"A company called LabCorp used a different test but published an article mentioning the patented fact. Metabolite sued on a number of grounds, and has won in court so far."

Am I missing something? I read this to mean that Mtabolite has sued (and won) to protect their patent on the correlation between blood levels of homocysteine and vitamin deficiency. Not the test to find the levels (LabCorp used a different test), but the fact of correlation.

If the law has been correctly interpreted, we are now at the end of the scientific age.

Please tell me I'm reading this wrong.

Posted by: gonk at March 22, 2006 04:10 PM

gonk, you're reading it wrong.


Posted by: peterNaCl at March 24, 2006 01:35 PM

It's the Court of Appeals for the Federal Circuit that's broken here.

In 1981, the Supreme Court covered the question of when a scientific principle becomes a patentable process, and stated that

"... insignificant postsolution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would be to allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection."

In the context here, the mathematical principle is 'a correlation', and the postsolution activity is 'correlating'. Exactly as Justice Rhenquist predicted in 1981, allowing such wording tricks to pass allows patent draftsment ot evade the limitations on type of subject matter eligible for patent protection. You can't use the principle of a correlation in practical affairs without infringing on the patented process.

The Supreme Court is hearing the case, but they can't do much more than repeat what they'd said before: "We _said_ insignificant postsolution activity is not enough!" and in all likelihood, the CAFC will invent more tricks to support their insistence that Congress intended everything to be patentable.

But unlike `most everything else on This Is Broken, you can do something about this one. Write your senators and insist that the patent legislation being drafted include a rule that an innovation must include a nontrivial physical component to be patentable. (This is especially important if you live in Vermont).

Posted by: BK at March 27, 2006 08:53 AM

Comments on this entry are closed

Previous Posts: