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Paul C. Craane Leads Local Discussion on Post-Bilski Decisions
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January 13, 2011
Continuing his participation in the dialog on patent eligibility post-Bilski, Paul C. Craane was interviewed for the January 4, 2011 Chicago Daily Law Bulletin article titled, "Biotech decision sheds new light into patent eligibility." While the title of the article emphasized the recent decision in Prometheus Laboratories Inc. v. Mayo Collaborative Services, Mr. Craane suggests that this decision should be read in context with Research Corporation Technologies v. Microsoft.
While describing Prometheus Laboratories as a "very conservative opinion in the sense that [the Federal Circuit covers] all of their bases" by applying the machine-or-transformation test and by determining that the claims did not preempt all uses of the recited subject matter, Mr. Craane notes that the machine-or-transformation test was not applied in Research Corporation Technologies. Instead, the Federal Circuit decided Research Corporation Technologies on the fundamental issue of abstractness, i.e., were the claims patent ineligible because they were drafted to an abstract idea. Finding that the claims were not drawn to an abstract idea, the Federal Circuit held the claims were patent eligible.
Mr. Craane concluded by adding that "[t]hese two cases in December are our first shot at seeing how the Federal Circuit is going to take the Supreme Court mandate to go out there and start making some rules on the issue of patent eligibility."
