Home -> Law Blog Directory -> Intellectual Property Law Blogs -> IPKat

Intellectual Property Law

: IPKat

Method of treatment claims in the US: a foreigner asks ...

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

A colleague who practises a long way from the United States has some questions concerning that country's patent law ("the envy of the world", as recently described in an Innovation Alliance circular) and thinks the IPKat's readers (or at least some of them) might be able to assist in answering them:

"USPTO allows ?direct? method of treatment claims, ie, ?A method of treating disease X, comprising ?? I understand that the US Patents Code exempts from patent infringement a medical practitioner?s performance of a medical activity, ie, ?A method of treating??.

If the Code provides a blanket exemption to medical practitioners, then

(i) who infringes ?method of treatment claims? in the US?
(ii) who is the target of such claims in US?

Could someone please point to a relevant case law in US.

A check of the MPEP (35 USC 287 (6)(c1 &2)) confirms the above but reveals that

(2) For the purposes of this subsection:
(A) the term "medical activity" means the performance of a medical or surgical procedure on a body, but shall not include (i) the use of a patented machine, manufacture, or composition of matter in violation of such patent, (ii) the practice of a patented use of a composition of matter in violation of such patent, or (iii) the practice of a process in violation of a biotechnology patent.

Does that mean that "method of treatment" claims follow rights granted for, say, "use of patented composition/patented machine", and therefore afford but a very "thin" blanket of exemption for medical practitioners?".

The IPKat would not dream of answering any questions involving US law, even though he's always happy to guess them, so he leaves it to his learned readers to provide some guidance.

Full post as published by IPKat on August 03, 2009 (boomark / email).