Biologic Patents Need Specific Claim Parameters After Prometheus Case

On a July 17 seminar on intellectual property sponsored by the Food and Drug Law Institute, Finnegan partner Richard B. Racine, spoke to how patent examiners can build a better patent.  “Number one, you have a claim process – if you don’t have a claim process, forget about it. Two, does the claim focus on a law of nature or a law of nature principle? So if those first two apply, then it says, does the claim include additional elements, steps … and is [it] practically applied? So, they say the claim must include additional elements or steps so that the inventor has practically applied or added something to the natural principle itself. So some integration of the steps beyond just looking at some natural principle.”  This implies that innovator companies seeking such patents should not be “applying conventional steps to the natural principle, like adding up stuff or measuring things, providing instructions or suing a machine just in a routine way that doesn’t add anything, he added.”  Mr. Racine also discussed specific claim parameters and biologics.