Section 102 and 103 won’t solve – new knowledge is by definition novel and non-obvious
Christopher Coons and Richard Blaylock, 2024 – *US Senator and **partner with the law firm Pillsbury Winthrop Shaw Pittman LLP and have been a practicing intellectual property attorney. Senate Judiciary Subcommittee on Intellectual Property Holds Hearing on Patent Eligibility Restoration Act, Hearing Transcript, 1/24, proquest Congressional, accessed via University of Michigan //DH
CHRISTOPHER COONS: So, Mr. Johnson's rebuttal to your previous comments, would Section 102, 103 still not pertain and still not prevent the patenting of something that was mere knowledge but with no novelty, for example, associated with it.
RICHARD BLAYLOCK: No, it would not because the hypothetical entertaining is newly apprehended knowledge about a particular particular genetic variant that has clinical relevance. So that particular knowledge, that discernment of that it is discovered is -- is new. And that is what the patent applicant would rely upon to claim because all the other elements of the -- of the claim the sequencing, the drawing the blood, the counseling the patient, all of that is old.
So, the you know, the -- the novelty and obviousness hurdles would be overcome relying, solely, on the discovery. And that is the reason why if you were to proceed with PERA, Invitae would urge the committee to consider a substantial revision which would renew a line of thought that has been in Supreme Court jurisprudence for a very long time, which is the recognition of natural phenomena, natural materials abstract ideas as prior art in the examination of patent applications.