Upgrade of Appeal Board Decisions Sought to Help Patent Medical Innovations

Sunstein LLP

Medical Diagnostic New

The Director of the Patent and Trademark Office (PTO) has been asked to upgrade the status of two recent decisions of the Patent Trial and Appeal Board (PTAB), which determined that two medical innovations are eligible to be patented. These decisions, Ex parte Olson and Ex parte Fautz, reversed rejections by the patent examiners, who held, based on the Supreme Court’s Alice and Mayo decisions (which we have frequently discussed, including here), that the inventions were not eligible to be patented because directed to abstract ideas.

The PTAB decisions had been designated on July 1, 2019 as “Informative.” The present request, made in a March 23, 2020 letter from the Naples Roundtable, asks the PTO to upgrade the status of these decisions to “precedential.” Precedential status would give the decisions the force of law and allow them to be cited as legal precedent. The Naples Roundtable is an organization focused on exploring ways to improve and strengthen the Patent System; its advisory board is chaired by David Kappos, former Director of the Patent and Trademark Office.

In Ex parte Olson, the claims concerned a catheter navigation system and method, reciting mathematical equations to reduce registration errors in a 3D imaging system so as to provide improved catheter placement in a patient. The Board found that the claims had limitations directed to a practical application of the alleged abstract idea and therefore were patent eligible.

In Ex parte Fautz, the claims, concerning magnetic resonance tomography (MRT) and methods for performing MRT using the apparatus, recited three mathematical formulae and four calculations that use those formulae. The Board found that the claims had limitations directed to a practical application of the alleged abstract idea, namely, improved sensitivity correction in surface coils used in MRT, resulting in improved images reconstructed from the tomography, and therefore the claims were patent eligible.

As noted in the letter from the Naples Roundtable, in finding a “practical application” of the alleged abstract ideas, these decisions follow the Guidance issued in January 2019 by the PTO Director relating to patent eligibility.

In seeking to upgrade the status of these two decisions, the Naples Roundtable commented on the heightened importance of medical innovation in a time of the coronavirus pandemic:

The claims at issue in each of these decisions involve medical inventions. The need for ongoing medical discovery and innovation in the life sciences has been highlighted by the recent outbreak of the COVID-19 pandemic—the very novelty of which will require innovation that should not be inhibited by a misapplication of Section 101. Designating these decisions as precedential will reduce the likelihood that Section 101 will be misapplied and, in turn, will promote innovation in the life sciences and encourage a robust response to public health challenges like the COVID-19 pandemic.

Although it may be argued that merely upgrading the status of two Appeal Board decisions is no big deal, there is in fact a potential benefit because the decisions would become binding precedent. Responding affirmatively to the request made by Naples Roundtable poses no serious problems for the PTO and would help make patenting medical innovations a little less onerous.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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