An Extinction Bar to Patentability

Abstract:     
Biodiversity possesses significant economic value, not least as a source of natural biochemicals discovered through bioprospecting. However, human activities are currently destroying biodiversity at a rapid rate, along with a rich source of natural biochemicals. Stemming this destruction requires novel conservation instruments, and the enablement requirement of patent law can be harnessed to provide one. The enablement requirement presents a significant hurdle to the patentability of biotechnological inventions, including those involving natural biochemicals. However, applying the logic of Ex parte Rinehart (Bd. Pat. App. Int. 1985), a case involving the patentability of natural biochemicals derived from a marine organism called a tunicate, a patent applicant should be able to satisfy the enablement requirement for patenting natural biochemical inventions by disclosing in a patent application specific kinds of useful information about an invention. Notably, source organisms of natural biochemicals could themselves be considered in situ deposits in satisfaction of the enablement requirement in exchange for provision by patent applicants of detailed information regarding the specific location, habitat, geographic range, and phylogenetic relationships of the source organisms. The information thus generated would enhance the public storehouse of knowledge, providing detailed information useful to biologists, conservationists, and future inventors. In addition, the in situ deposit could create an 'extinction bar' to patentability and enforceability because disappearance of the source organism would lead to loss of patent rights. This extinction bar would provide a new incentive for conservation of biodiversity because the economic interests of both patent applicant and source country would be aligned to ensure the survival of any source species upon whose survival monopoly profits rested. No modification of current patent law would be required, only proper application of existing, though as yet unrealized, patent law.

Keywords: patents, biodiversity, biotechnology, pharmaceuticals, medicine, bioprospecting, biological deposits, enablement, extinction, conservation

JEL Classifications: K11, K23, K29, K32, K33, K39, K42

Accepted Paper Series