Because of the Supreme Court's decision in Alice and Myriad relating to subject matter patentability, any patent attorney working in the bio or software space must be cognizant of the need to tell a good story as to what makes any invention in these fields something more than an abstract idea that is not patentable. We have always had to tell that good story to overcome a prospective obviousness challenge. But now we must also discuss the technical problem overcome by the solution described in the patent application. Doing this after the application is filed and a rejection occurs is too late.
In one case, during prosecution we encountered skepticism from the Patent Office rooted in a basic lack of understanding of scientific experimentation. Our work involved CRISPR technology in eukaryotic cells, where initial low success rates were mistaken for fundamental doubts about the invention. We successfully countered the Office’s argument by illustrating that such experimentation is typical in high-level research, involving stepwise problem-solving and not indicative of any fundamental flaws. The client’s successful reduction to practice, using conventional biomedical engineering techniques, was key to demonstrating the viability of our invention despite initial setbacks.
The patent world in biomedical engineering may also be as complicated as the inventions themselves. A challenge I had to overcome was the fine line between innovation and existing patents. Instead of being submerged in the language, I saw it as a puzzle. I carefully analyzed previous patents, locating the novel perspectives that our innovation provided. The focus wasn’t simply on safeguarding intellectual property; it was about conveying a captivating tale of how our work made its mark. Mastering the patent labyrinth became a tactical game, creating an opportunity for our innovation while keeping proper distance from other players in this field.