Patent & IP blog, discussing recent news & scholarship on patents, IP theory & innovation.
Friday, December 23, 2011
Judge Richard Linn: Changing Times, Changing Demands
Monday, December 12, 2011
Jay Kesan et al.--Developing a Comprehensive Patent Related Information Retrieval Tool
Monday, December 5, 2011
David L. Schwartz: Prospectivity and Retroactivity in Patent Law
Should the Federal Circuit issue a higher proportion of non-precedential opinions? In Prospectivity and Retroactivity in Patent Law, Professor David Schwartz of the Chicago-Kent College of Law writes a draft article that raises this and many other fascinating questions.
Reflecting on the role Federal Circuit precedent plays on patent rights, Schwartz uses his piece to illustrate that, while many Federal Circuit opinions have significant retroactive effects on pre-existing patents, most of these opinions have few (if any) prospective effects on future patents. His point, essentially, is that patents, once issued, are very rarely capable of meaningful amendment or modification, so court opinions that limit (or enhance) the value of pre-existing patents will have a meaningful impact on those pre-existing patents; in many cases, the court opinions will contract a patentee’s rights, and there is nothing that the patentee will be able to do about it. At the same time, however, court opinions will often have little to no impact on future patents, as savvy patent prosecutors will usually find ways to “draft around” a court’s newly established patent rules.
Monday, November 21, 2011
Peter S. Menell - The Common Law Development of the American Patent System: What History Can Teach Us
Wednesday, November 9, 2011
Dan Burk: Do Patents Have Gender?
Monday, October 31, 2011
Herbert Hovenkamp: Patent Exclusions and Antitrust After Therasense
Tuesday, October 18, 2011
Jonathan Masur: The Ever Expanding Patent System
In his thought-provoking article, Masur suggests that the administrative nature of patent law creates institutional pressure to expand the boundaries of patentability. He arrives at this novel theory by combining a few simple, yet profound, observations into a model that predicts patent expansion.
Wednesday, September 28, 2011
John M. Golden: Patentable Subject Matter and Institutional Choice
Monday, September 26, 2011
Top 10 New IP Paper Downloads
Monday, September 19, 2011
Colleen Chien: Predicting Patent Litigation
Sunday, September 18, 2011
But I start clerking tomorrow, so I am leaving Written Description in other capable hands while I take a one-year blogging break. You will still be able to follow WD on Facebook and Twitter (as well as by email or with RSS readers), and feel free to email any of the blog authors with your suggestions, questions, or comments. Since I started this blog almost eight months ago, I have gotten to know so many interesting people in the patent community—both scholars and practitioners—and I really appreciate all of your feedback. Looking forward to jumping back into the conversation in a year!
Saturday, September 17, 2011
Steven Horowitz: Copyright's Asymmetric Uncertainty
Thursday, September 8, 2011
Sarah R.W. Rajec: Tailoring Remedies To Spur Innovation
Washington Declaration on Intellectual Property and the Public Interest
Introducing New Written Description Bloggers
Thursday, September 1, 2011
Brian Love on Patent Litigation Timing
Wednesday, August 31, 2011
Open Video at NYLS and Smart Phones at Whittier
Tuesday, August 30, 2011
Sean Seymore on "Null Patents"
Sunday, August 28, 2011
More Upcoming IP Conferences
Thursday, August 25, 2011
Jacob Rooksby on University Patent Litigation
Sunday, August 21, 2011
Top 10 New IP Paper Downloads
Friday, August 19, 2011
Anna Laakmann: Pragmatic Patent Adjudication
Tuesday, August 16, 2011
Antitrust IP Conference at Stanford - Oct. 6
These questions will be addressed at the ABA Conference at Stanford on Oct. 6: Antitrust and IP in Silicon Valley and Beyond. Hear speakers from the FTC, DOJ, IV, Square, Microsoft, and more. Conference participants will also receive iPads and voting clickers for interactive participation! (Presumably you have to give the iPads back.) The conference is free for law students and has a reduced rate for academics. For more, see announcements from the ABA and from Stanford.
Thursday, August 11, 2011
IPSC Today and Tomorrow
Tuesday, August 9, 2011
What Experience Is Necessary To Write Good Patent Scholarship?
Saturday, July 16, 2011
Non-Faculty IPSC Presenters
Tuesday, July 12, 2011
Jacob Sherkow: Negativing Invention
Sunday, July 10, 2011
Top 10 New IP Paper Downloads
Tuesday, July 5, 2011
Why Isn't IP on the Bar Exam?
Sunday, July 3, 2011
Katherine Strandburg: Patent Fair Use 2.0
Thursday, June 30, 2011
Adam Mossoff on Patent History and Commercialization
Monday, June 27, 2011
Hemphill & Sampat on Pharma Market Life
Saturday, June 25, 2011
Cultural Cognition Project: Rationality and Climate Change
The conventional explanation for controversy over climate change emphasizes impediments to public understanding: Limited popular knowledge of science, the inability of ordinary citizens to assess technical information, and the resulting widespread use of unreliable cognitive heuristics to assess risk. A large survey of U.S. adults (N = 1540) found little support for this account. On the whole, the most scientifically literate and numerate subjects were slightly less likely, not more, to see climate change as a serious threat than the least scientifically literate and numerate ones. More importantly, greater scientific literacy and numeracy were associated with greater cultural polarization: Respondents predisposed by their values to dismiss climate change evidence became more dismissive, and those predisposed by their values to credit such evidence more concerned, as science literacy and numeracy increased. We suggest that this evidence reflects a conflict between two levels of rationality: The individual level, which is characterized by citizens’ effective use of their knowledge and reasoning capacities to form risk perceptions that express their cultural commitments; and the collective level, which is characterized by citizens’ failure to converge on the best available scientific evidence on how to promote their common welfare. Dispelling this, “tragedy of the risk-perception commons,” we argue, should be understood as the central aim of the science of science communication.Comments are welcome!
Thursday, June 23, 2011
SSRN Patent Professor Rankings
Tuesday, June 21, 2011
Mann & Underweiser: New Look at Patent Quality
Sunday, June 19, 2011
Top 10 IP Paper Downloads
Saturday, June 18, 2011
Colleen Chien on the Patent Ecosystem
Friday, June 10, 2011
Lemley: Myth of the Sole Inventor
Sunday, June 5, 2011
T.J. Chiang: Levels of Abstraction
Sunday, May 29, 2011
Peter Lee: Accession and Patent Remedies
Lee considers the doctrine of accession, which governs the "mistaken improvement" of property. In a canonical accession case, Wetherbee v. Green (Mich. 1871), Wetherbee chopped down $25 worth of trees under a faulty license and made $700 worth of barrel hoops. The Michigan Supreme Court held that as long as Wetherbee was acting in good faith, title to the wood would transfer and he would only need to compensate the true owners for their $25 loss, rather than giving them the $700 barrel hoops.
So what happens, Lee asks, if Wetherbee's fictitious great-great-granddaughter patents a revolutionary new battery and begins commercializing it, only to be sued for infringing a patent covering an older battery design? What if she is unable to negotiate a reasonable licensing agreement?
Monday, May 23, 2011
Unfortunately, I was unable to locate any scholarship discussing this important topic. But congratulations to all my graduating classmates!
Friday, May 20, 2011
Top 10 Most-Cited Patent Articles
The Federal Circuit cites legal scholarship as frequently as other circuits, according to a study by David Schwartz and Lee Petherbridge (Patently-O has a nice summary). I have also heard that patent scholarship tends to be more widely read than other legal scholarship, both because many law review articles have practical value and because patent practitioners often work at a high academic level (I have no evidence to support this claim, but it seems plausible). Of course, most citations to patent scholarship come from other scholarship and secondary sources. So what are the most cited patent law articles?
Monday, May 16, 2011
Michael Carrier on the Patent-Antitrust Paradox
Monday, May 9, 2011
Patent Law, State Law, and Abraxis v. Navinta
Federal law is generally interstitial in its nature. It rarely occupies a legal field completely, totally excluding all participation by the legal systems of the states. . . . It builds upon legal relationships established by the states, altering or supplanting them only so far as necessary . . . . Congress acts, in short, against the background of the total corpus juris of the states in much the way that a state legislature acts against the background of the common law, assumed to govern unless changed by legislation.One might think that patent law is entirely federal, but Professor Amar (who has also reviewed an earlier edition of the casebook) liked to remind us that federal law is never in a vacuum.
Thursday, May 5, 2011
Kara Swanson: Feminism, Corsets, and IP
What do feminism, the corset, and intellectual property have in common? Quite a bit, it turns out, according to Kara W. Swanson (Northeastern Law) in her latest paper, Getting a Grip on the Corset: A Feminist Analysis of Patent Law. For Swanson, feminine interventions in patent-protected technology converge in the corset. The corset involved women as both consumers and litigants. The corset constructed gender by shaping the feminine form into a graceful silhouette with a small waist. And the corset narrated gender by calling into question the divide between public and private in Egbert v. Lippmann—the 1881 “corset case” that provided a foundational examination of the public use doctrine. The case turned on the question of Francis Lee Barnes’ right to her deceased husband’s patent for an improvement in corset springs. Problems abounded for Francis because the Court cast her as a public woman at a time when the public space of the market belonged to men and the private sphere of domestic relations to women.
Monday, May 2, 2011
Sarah Tran on Expediting Green Patents
The Green Technology Pilot Program was launched in December 2009 in response to green patent programs in the UK, Japan, Australia, and Korea. But Tran points out that it was limited to patents already in the system falling within a small subset of technology classes, with further limitations on types and number of claims. Perhaps more problematic, "accelerated review was only available for one year to applications already in the system—the program had no relevance to technologies that had not yet been invented." But even now that many of these restrictions have been removed, the program remains under-enrolled. What's wrong with it, and how can it be improved?
Friday, April 29, 2011
Monday Deadline To Present at IP Scholars Conference
Wednesday, April 27, 2011
Seaman on Willful Patent Infringement
Although "[m]any observers predicted that [Seagate's] heightened standard would result in far fewer willfulness findings and enhanced damage awards," Seaman's empirical study "finds that willful infringement was found only about 10% less often after Seagate." For a concise summary of the specific findings, see Peter Zura's post on his 271 Patent Blog. Of course, with studies of this sort it is always difficult to separate the effect of the new legal rule from the decisions of the parties over which cases to litigate, so it is hard to know what conclusions we can draw, but I think Seaman's findings are still useful.
Sunday, April 24, 2011
15 Years of TRIPS Implementation
Edward Lee (Chicago-Kent Law) presented Measuring TRIPS Compliance and Defiance: The WTO Compliance Scorecard, which "proposes the tabulation of a TRIPS Compliance Scorecard measuring a country's attempt to correct any treaty violation that a WTO panel or the Appellate Body has found against the country. . . . Two alternative methods are offered – a simple and a complex score to track the violating country's response. Scorecards are computed for WTO countries under both methods; in both cases, the U.S. ends up with the lowest score in 2011."
The other papers presented don't appear to be online:
- Donald Harris (Temple Law), Evaluating the Success of TRIPS by Looking to Compulsory Licensing
- Sean Flynn (American University Washington College of Law), From TRIPS to ACTA: The Rise of the Enforcement Agenda
- Ruth Okediji (Minnesota Law), If WIPO Leads, Should the World Follow?: Decentralizing IP Norm-making Processes and the Norms That Result Therefrom
- Henning Grosse Ruse-Khan (Max Planck Institute for Intellectual Property, Competition and Tax Law), The International Law Relation Between TRIPS and Subsequent TRIPS-Plus Free Trade Agreements: Towards Safeguarding TRIPS Flexibilities?
- Susan Sell (George Washington), TRIPS Was Never Enough: TRIPS-Plus, ACTA, and the Trans-Pacific Partnership Negotiations
Thursday, April 21, 2011
Do You Want To Blog About IP Scholarship?
Also, if any blog readers will be at the Fordham IP Conference next week, feel free to email me and let me know. I would love to meet up and hear about any papers you are working on! I will probably be posting less frequently over the next month during exams, but I will want lots to blog about this summer.
Tuesday, April 19, 2011
Are Biotech Patents Enabled?
Karshtedt discusses his new paper, Limits on Hard-To-Reproduce Inventions: Process Elements and Biotechnology's Compliance with the Enablement Requirement, in which he argues that claim limitations can help enable biotech patents. I have also discussed the enablement problem for biologics starting at ¶ 106 of Access to Bio-Knowledge: From Gene Patents to Biomedical Materials, which cites Gregory Mandel's argument that many biotech patents fail enablement. What do readers think: is enablement a problem for biotech? Should biotech patents disclose more? I'd like to think about this issue more as I revise my paper on patent disclosure.
Sunday, April 17, 2011
Does Microsoft v. i4i Matter?
Amicus briefs from the legal academic community generally support Microsoft. A brief of 37 law, business, and economics professors (with counsel Mark Lemley) argues that given the constraints on PTO review (e.g., that examiners only have 16-17 hours per patent), the clear and convincing evidence standard is appropriate only when the PTO considered an issue on the record. This echos a 2007 Stanford Law Review article by Lemley and Doug Lichtman, and Lichtman makes the same point in a (tritely titled) New York Times op-ed. Microsoft is also supported by a brief from the William Mitchell Intellectual Property Institute, arguing that the clear and convincing evidence standard is "historically anomalous" and "conflicts with general legal principles," and a brief from digital IP scholar Lee Hollaar, arguing that the heightened standard raises particular problems for software patents. But does the standard of patent validity actually matter?
Thursday, April 14, 2011
David Fagundes on Roller Derby IP
This analysis of derby names shows that IP norms emerge independently of law’s substantive (un)availability, so long as the relevant group is close-knit and the norms are welfare-maximizing. These groups are especially likely to craft formal regulation and registration schemes to buttress informal norms where the relevant community is identity-constitutive, and where the intangible goods arise from nonmarket production. In addition to this critique of existing explanations for IP norm emergence, this study suggests a counter-theory for the emergence of user-generated IP governance systems, casts (further) doubt on the coherence of the prevailing neoclassical economic assumptions underlying IP law, and calls into question what it means for rules to be law.If, like me, you hadn't heard of roller derby pseudonyms, check out the description of them on pp. 11-12, with names including Tara Armov, Paris Killton, Venus de Maul'r, Paris Troika, Madam Ovary, and Raven Seaward.
Monday, April 11, 2011
New Book on Innovation: Rules for Growth
Here is the Table of Contents, along with notes about what struck me during my brief skim:
Thursday, April 7, 2011
Ryan Vacca: The Federal Circuit Acts Like an Administrative Agency
Sunday, April 3, 2011
Heidi Williams: IP on Genes
Williams looked at the race to sequence the human genome between the Human Genome Project, whose genes were freely available, and Celera, whose genes were protected through contractual restrictions on redistribution and licenses for commercial uses. (So Williams was not looking at gene patents, but her results may have implications for the gene patent controversy and Myriad case.) Celera's IP protection only lasted until the gene was re-sequenced by the Human Genome Project, which meant a maximum of two years of protection, ending in 2003. To my knowledge, this is the first paper to look at the impact of open access not just on publications, but also on commercial products. The results are very interesting:
Tuesday, March 29, 2011
Jeanne Fromer: Patentography
Sunday, March 27, 2011
Michael Risch on Patent Trolls and Utility
Wednesday, March 23, 2011
Do Patents Disclose Useful Information?
Courts often state that patents are justified by disclosure theory, the idea that patents are awarded as quid pro quo for the public disclosure of inventions. Economists have long argued that disclosure theory should be accorded no weight in the design of the patent system because patented inventions would have been disclosed anyway. Even the few legal scholars who dispute these economic arguments agree that, in practice, patents are currently not useful as technical sources for other innovators. This Article challenges all these arguments, arguing not that disclosure theory is a valid justification for the patent system, but rather that the benefits of full technical disclosures are stronger than is generally believed, and that these benefits probably outweigh any incremental loss in innovation incentives. Using results from a new survey of nanotechnology researchers and case studies of individual patents, this Article shows that patents do contain useful technical information that is not available elsewhere. This technical content could be improved, however, in at least three ways: stronger enforcement of disclosure requirements (including through an obligation to respond to good faith reproducibility questions from skilled researchers), elimination of legal barriers to using patents as technical sources, and improved access to patents through peer production. These changes will help defuse the tension between patents and the open culture of science.
Monday, March 21, 2011
Tim Holbrook: Can presumptions save patents' technical nature?
Saturday, March 19, 2011
Allison, Lemley & Walker: Repeat Patent Litigants
The study was based on the Stanford IP Litigation Clearinghouse, which links all patent suits since 2000 with their corresponding patents (and is "free to academicians, public interest researchers, judges, policymakers, and the media" and run by Lex Machina). The authors compare the 106 patents that were litigated 8 or more times with 343 patents that were litigated only once. Among their findings:
Wednesday, March 16, 2011
Samuelson & Schultz: What business methods are patentable after Bilski?
Sunday, March 13, 2011
John Duffy on Business Method Patents
Thursday, March 10, 2011
Dmitry Karshtedt: Samsung-Stanford Symposium on Patent Remedies
The inaugural Samsung-Stanford Symposium on Patent Remedies took place on February 18, 2011, at Stanford Law School. The panels featured both law professors and students who won the Samsung-Stanford prizes on the basis of their proposals. Links to videos of the panels and PDFs of the papers are included below.
The first panel, moderated by Professor Robin Feldman of U.C. Hastings College of the Law, was focused on injunctions. Janet Freilich, a 2L from Harvard, kicked off the discussion and presented a nuisance framework that judges could use to determine when to issue injunctions, supplementing the four-part test endorsed in eBay v. MercExchange. Professor Christopher Cotropia, from the University of Richmond, then presented an empirical paper that showed that the Federal Circuit’s Kyocera case did not have the expected effect of reducing the number of filings by patent owners to prevent the importation of infringing goods through the International Trade Commission. Professor Ted Sichelman, from the University of San Diego, argued that patent remedies must be based on harm to the public caused by diminished incentives to innovate due to infringement, rather than on injury to individual patent owners. Professor Peter Lee of U.C. Davis then proposed a rule, based on the law of accession in the real property context, holding that infringement suits against owners of improvement patents should result in damages rather than injunctions. Finally, Professor John Golden of University of Texas discussed the compliance of patent injunctions with the Federal Rules of Civil Procedure.
The second panel, moderated by Brian Love, a teaching fellow at Stanford Law, focused on patentee overcompensation and apportionment. In the first paper, Professor Amy Landers of McGeorge demonstrated that the history of the Patent Act supported apportionment based on the novel contribution of the patentee over the prior art. Professor Bernard Chao of the University of Denver then argued that more reasonable damage awards will be reached if courts, as they may, allow accused infringement to implead other infringers for contribution. Using the example of the iPhone, 3L Ravi Mohan of Santa Clara argued that the use of apportionment is unavoidable for complex technologies. Finally, Dmitry Karshtedt, a 3L at Stanford, highlighted a panel split in the Federal Circuit involving differing treatment of proven acts of direct infringement in figuring indirect infringement damages.
The third panel, moderated by Professor Colleen Chien of Santa Clara, showcased empirical papers on patent damages. Damon Andrews, a 3L at the University of Iowa, argued that the goal of much of patent litigation is to extract settlements from defendants. Professor Michael Mazzeo of Northwestern University, in a paper co-authored by Jonathan Hillel of Skadden Arps and Samantha Zyontz of George Mason University School of Law, showed that patent damages are not as extravagant as commonly perceived. Rhonda Sadler, a 3L at Mercer Law School, suggested approaches to simplifying jury instructions based on evidence of lack of understanding of current jury charges in patent cases. Professor Christopher Seaman of Chicago-Kent College of Law, completed the panel by demonstrating the effects of opinions of counsel on cases dealing with various issues in patent law such as willful infringement.
The fourth and final panel dealt with structured calculation of reasonable royalties, and was moderated by the Honorable Ronald Whyte of the Northern District of California. Professor Thomas Cotter of the University of Minnesota discussed four principles that should guide courts in calculating reasonable royalties—faithfulness to substantive law, focus on compensation sufficient to make the patentee whole, increased damages only when this is needed for optimal deterrence, and basis of damages on licenses that parties would have actually entered into but for the infringement. The second paper was given Kanav Hasija, a Master in Intellectual Property at the University of New Hampshire School of Law and co-authored by Paul Tanpitukpongse, a 3L at UNH, and discussed a game theory approach to calculating reasonable royalties. Stanford LLMs Tony Lai and Samuel Windley co-authored the third paper, presented by Samuel, which involves courts encouraging patent litigants to negotiate actual royalty agreements and using such negotiations as the basis for reasonable royalties. The conference ended with Stanford’s Mark Lemley, who explained how courts should approach the issue of ongoing royalties in cases where injunctions are not granted and the losing defendant continues to infringe.
Monday, March 7, 2011
Robin Feldman on Owning You
Part I is about neither patents nor Bilski: Feldman argues that Moore v. Regents of the University of California (holding that a patient who consented to removal of his cells did not have a property interest in those cells) was wrongly decided, and that a person should have a property right in cells that are removed from his or her body. (If I were editing this piece, I might recommend that this Part be cut or reduced to a paragraph in the Introduction: this argument isn't new, and I think it detracts from the more interesting arguments in Part II.)
Part II examines "the extent to which inventors can tie up human genes and related substances" in light of Bilski and Association for Molecular Pathology. Like Dreyfuss and Evans, Feldman focuses on the use of "pre-empt" in Bilski, arguing that "[i]n gene-related inventions, pre-emption problems can emerge ... in the context of attempts to tie up a natural phenomenon." Under this preemption test, inventors should not be allowed to patent "the relationship between elevated blood sugar levels and diabetes" but should be able to patent "personalized medicine diagnostic methods, which may involve hundreds of biomarkers and complex statistical modeling." Considering the breast cancer genes at issue in Molecular Pathology, Feldman argues that the diagnostic claims are closer to personalized medicine, while the therapeutic claims (for "the 'method' of determining whether a cancer therapeutic is effective") have "greater problems."
"The more interesting question," writes Feldman, "involves the claims to particular DNA and cDNA sequences created outside the human body." She argues that the common analogy between gene patents and isolated and purified natural products (like the paper pulp in the 1874 American Wood-Paper case) is outdated because "the modern creation of genetic inventions no longer requires purification"; instead, genes can be built "from the ground up" through chemical synthesis. Feldman argues that genes should be patentable if researchers can develop specific uses for them, and that "the fact that genes exist in a natural form in the human body should not prevent patenting of genes in laboratory form." The subject matter test is related to novelty and utility: "we ask whether the invention allows us to accomplish something that we could not accomplish with the natural product. Applying that yardstick to isolated DNA and cDNA would suggest that such products should be considered human invention, rather than the handiwork of nature."
Feldman says that the problem is not gene patents per se; rather, it is "allowing patent holders to reach beyond the state of knowledge at the time of the invention," and "[t]he solution lies in properly limiting the scope of the allowed claim." But unlike Lemley et al., who argue that § 101 independently limits claim scope, Feldman says that "this limitation could be accomplished through the disclosure requirements of section 112." Myriad's BRCA1 patent claims, for example, should be limited to the BRCA1 sequence "for the purposes of breast cancer diagnosis in a designated patient population." (Feldman doesn't explain what "a designated patient population" would be, but presumably it would be something like "women at risk for breast cancer.") These restrictions might be important in some hypotheticals, but they wouldn't satisfy the Molecular Pathology plaintiffs, since the use of the BRCA1 gene for breast cancer diagnosis is what they care about. But presumably Feldman would argue that under our current patent laws, that makes doctrinal sense.
Wednesday, March 2, 2011
Dreyfuss & Evans: Bilski and Gene Patents
Like Lemley et al. and Menell, Dreyfuss and Evans agree that the fractured Bilski opinions were uninformative. (Does anyone think the Bilski opinions were great? That would be a novel argument.) They write that "preempt" is used "entirely within the legal domain" and has no meaning in "technological discourse." (It addition to describing displacement of state law by federal law, the term frequently came up in law review article discussions: a "preempted" piece failed the novelty prong for a good law review article.) In Part I, Dreyfuss and Evans argue that § 101 does not tell us "whether" a new technology can be patented, but rather "how" the technology is claimed: "claims that 'preempt' competitive development—that cover prospects that cannot be efficiently mined by individual rights holders—are barred." This is very similar to the argument by Lemley et al. that § 101 is about claim scope, not gatekeeping.
In Part II, Dreyfuss and Evans apply these ideas to patents on genetic diagnostics, which is a subset of what are often called "gene patents," and I will use the "gene patent" shorthand in this post. Lawyers who are unfamiliar with genetic diagnostics will enjoy II.A on "The Science of Genetics." II.B then reviews the SACGHS report on genetic diagnostic patents (Evans was chair of the SACGHS task force). The piece reports that "when there were patents held exclusively by a single entity, both clinical practice and scientific development were impaired," which is a different message from the SACGHS draft report, which concluded that "patents covering genetic tests ... do not appear to be causing wide or lasting barriers to patient or clinical access," as I quoted in Access to Bio-Knowledge: From Gene Patents to Biomedical Materials. But because the draft report found that patents do little to help the development of new genetic diagnostics, I argued in Access to Bio-Knowledge that the report still supported calls for exempting genetic diagnostics from patentability—a conclusion that the final report makes even stronger.
Dreyfuss and Evans hint in Part III that a legislative carve-out may be unnecessary because patents on genetic diagnostics might "preempt" competitive development for at least four reasons: (1) inventing around gene patents is impossible, (2) gene patents limit interoperability, (3) gene patents create broad unmined prospects, and (4) patentees for genetic diagnostics tend to be academics who are not primarily motivated by patents. (This last factor seems like an important policy concern, but the link to preemption is less obvious than for the other three.) The authors never actually say that they think genetic diagnostic patents are not patentable subject matter under Bilski, but they note that "it is no wonder that courts have begun to question the validity of these patents" (citing Association for Molecular Pathology) and that "one Federal Circuit judge has already suggested that Bilski's preemption test raises serious questions about patents on isolated DNA molecules" (citing Judge Dyk's opinion in Intervet v. Merial).
I wish that the paper had a more explicit conclusion—even if the authors do not feel comfortable claiming that genetic diagnostic patents do preempt development and are thus unpatentable subject matter, they could at least lay out what factors still need to be examined to decide whether this is true—but I still think the paper does a nice job of highlighting the preemption concern and thinking about factors that might be relevant in investigating preemption.
Tuesday, March 1, 2011
Peter Menell on Bilski Methodology
In his Stanford symposium piece, Menell argues that Bilski was a missed opportunity to delineate the confusing boundaries of patentable subject matter. This by itself isn't news: as soon as Bilski came down, the patent blogosphere said it was a vague letdown that offers no clarity. And the opinion fit nicely with Peter Lee's thesis about Supreme Court patent cases raising cognitive burdens for judges. But Menell does not simply critique the Court's fractured majority as vague; he also criticizes its methodology: "In its effort to shoehorn analysis of patentable subject matter into a textualist mold, the Court collapsed the rich historical development of patentable subject matter into three amorphous, static, and ill-defined exceptions [for laws of nature, physical phenomena, and abstract ideas]. The resulting methodology and analysis are incoherent." Although Menell argues against the Supreme Court's "textualist turn," he is still able to wield the tools of textualism more deftly than the Court when criticizing the majority opinion in Part II.
Rather than using textualism, Part IV argues that the Court should "integrate the constitutional and jurisprudential traditions surrounding patentable subject matter with statutory construction principles and forthright recognition of the challenges of applying historic doctrines to unforeseeable technological developments." Specifically, courts should (1) "ascertain whether any constitutional provision constrains legislative or judicial power" and then (2) "determine the appropriate interpretive lens" based on whether the statutory text in question was intended to change prior law—if not, courts should continue the common-law patent tradition.
Applying this framework to Bilski, Menell argues that "[t]he historical record strongly indicates that 'useful Arts' was understood at the time of the Constitutional Convention to limit patents to technological fields," and that "[t]here is no reason to believe that 'business methods' have become a science or technology," so "the Court did not need to reach the statutory question." But if it did consider the statute, the Court should have noted that the 1952 Patent Act "perpetuated" a "functional, common law approach" for patentable subject matter, using "process" not in its 1952 dictionary sense but "based upon the rich jurisprudence of the prior 150 years," which "limited 'process' or 'art' to physical acts that produce a physical or chemical transformation or operate a machine."
It sounds like Menell thinks the Federal Circuit got it right with the machine-or-transformation test, and since he was on the same panel at the Stanford symposium with Mark Lemley, whose paper argued against gatekeeping approaches like machine-or-transformation, it would have been interesting to hear their conversation about this. Any readers who were there want to share any details?
*Nitpicky Bluebook tip of the day: The Bluebook is full of unnecessarily complicated rules (see my classmate James Kwak's critique), but once you have been an articles editor, little mistakes jump out at you. One of the most common mistakes that slips past editors is the capitalization of the word "to," which should be lowercase when used as a preposition (rule 8(a)), but uppercase when used as part of an infinitive verb (as in two of the examples in rule 16.3). So in the title of this article, we have "to the Promised Land" and "to Its Technology Mooring" but "To Ground." (Also note that "Its" should be capitalized, even though it is under five letters, because it is not an article, conjunction, or preposition.) Will "mistakes" like this keep your brilliant article from getting accepted? Of course not. But will lots of Bluebook mistakes signal that you might have been sloppy with more important details? Maybe. (Whether editors should be so worried about the capitalization of "to" is another question...)