U.S. Supreme Court Case Could Have Major Impact on Software and Business-Method Patents, Wolf Greenfield Says

2 November 2005

The Supreme Court's decision to accept a
patent-infringement suit regarding a system for diagnosing a vitamin
deficiency related to heart attacks, strokes, and dementia "opens the door
for the court to break more than 20 years' silence about limitations on
what subjects can be patented," says James Foster, a litigator with the
intellectual property law firm of Wolf, Greenfield & Sacks, P.C. "This
seemingly narrow case could result in the Court overturning two decades of
precedent and restricting the ability of inventors to protect software
products or business methods."

In the early 1980s, the Supreme Court ruled that "laws of nature, natural
phenomena, and abstract ideas" are not patentable, but "an application of a
law of nature or mathematical formula...may well be deserving of patent
protection."

The case the Court accepted on Oct. 31, Laboratory Corp. of America
Holdings v. Metabolite Laboratories, Inc., involves a method for detecting
vitamin B12 deficiencies. The inventors had discovered a correlation
between the level of another substance in the body (homocysteine) and a
deficiency in vitamin B12. The test for that substance was already in
existence, but the patent would seem to bar anyone who conducted that test
from using the result to deduce there was a vitamin B12 deficiency.

"The Supreme Court's decision to take the case is surprising, particularly
since it has declined to hear similar past cases," Foster said. Even the
U.S. Solicitor General's office recommended denying the appeal.

The court is likely to hear the case sometime early in 2006 and publish its
decision later in the year.

Wolf Greenfield, Boston, is one of New England's largest and oldest
intellectual property law firms, serving companies that make everything
from snowboards to biotech drugs to electronics to water-purification
systems--plus universities and research centers. Practice areas:
biotechnology, chemical, electrical & computer technologies, IP
transactions, litigation, mechanical, trademark and copyright, including
Internet issues. Its experts can comment on any intellectual property
issue, including recent federal court decisions, lawsuits, patent issues in
technology and biotech, trademark and copyright issues in any industry.
Web: www.wolfgreenfield.com

Contact:
Henry Stimpson
Stimpson Communications
508-647-0705
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SOURCE: Wolf Greenfield