Abstract

http://ssrn.com/abstract=1471369
 


 



Natural Substances and Patentable Inventions


Linda Demaine


Arizona State University (ASU) - Sandra Day O'Connor College of Law

Aaron Xavier Fellmeth


Arizona State University (ASU) - Sandra Day O'Connor College of Law

2003

Science, Vol. 200, p. 1375, 2003

Abstract:     
The discoverer of a naturally occurring phenomenon - such as an element, chemical, or mineral - cannot patent the phenomenon. This long-standing principle of patent law, which reflects the 'invention' prerequisite for patent protection, has been upheld consistently by the U.S. Supreme Court. Yet, the Patent and Trademark Office and federal courts now routinely hold discovered natural substances patentable if they are 'isolated and purified' or otherwise insubstantially modified. Naturally occurring DNA, protein biomolecules and other purified natural substances have, consequently, become the subject of thousands of patent applications.

Courts have failed to interpret the Patent Act in a manner that captures the prerequisite of human ingenuity to patentability where the claimed product is based on a newly discovered, natural substance. It is inappropriate to examine whether the other, more often discussed, requirements of patentability, such as novelty, utility, and nonobviousness, are satisfied before properly determining that applicants are claiming more than a trivial modification of a natural substance.

This article discusses the use of a variant of the 'substantial transformation test' (STT) used in customs law, in which a product is considered to have undergone a substantial transformation when it has a 'new and distinct name, character, or use,' to distinguish products of nature from patentable inventions. The real focus of the test as applied to natural substances is a change of character.

Keywords: patents, Patent Act, intellectual property

Accepted Paper Series





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Date posted: September 10, 2009  

Suggested Citation

Demaine, Linda and Fellmeth, Aaron Xavier, Natural Substances and Patentable Inventions (2003). Science, Vol. 200, p. 1375, 2003. Available at SSRN: http://ssrn.com/abstract=1471369

Contact Information

Linda Demaine (Contact Author)
Arizona State University (ASU) - Sandra Day O'Connor College of Law ( email )
Box 877906
Tempe, AZ 85287-7906
United States
Aaron Xavier Fellmeth
Arizona State University (ASU) - Sandra Day O'Connor College of Law ( email )
Box 877906
Tempe, AZ 85287-7906
United States
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