From Bilski Back to Benson: Preemption, Inventing Around, and the Case of Genetic Diagnostics
Rochelle C. Dreyfuss
New York University - School of Law
James P. Evans
University of North Carolina (UNC) at Chapel Hill - School of Medicine
Stanford Law Review, Vol. 63, 2011
NYU School of Law, Public Law Research Paper No. 11-46
The long-anticipated decision in Bilski v. Kappos was supposed to end uncertainty regarding the patentability of process claims (or, at the least, business method claims). Instead, the opinion featured a series of anomalies: The Court emphasized strict construction of the Patent Act, but acknowledged three judge made exceptions to patentability. It disapproved State Street, the Federal Circuit case that had upheld business method patents, but could muster only four votes for the proposition that business methods are in fact unpatentable. But even though the Court upheld business method patents, it invalidated all of Bilski’s hedging claims. And while the Justices agreed on one thing - a patent that “preempts” something (a mathematical formula, an approach, a commonly used idea, a wide swath of technological developments, the public’s access) is bad - they failed to operationalize the concept. That problem had plagued the law prior to State Street; in the interest of preventing the same set of problems from recurring, this Article uses recent empirical studies on gene patents to tease out indicia (“clues”) to supplement the machine-or-transformation test for determining when a claim is preemptive and therefore invalid. Chief among these clues is the inability to invent around claims that cover broad prospects.
Keywords: patent, genetics, diagnostics, business methods
JEL Classification: O31, O34Accepted Paper Series
Date posted: June 22, 2011 ; Last revised: August 2, 2011
© 2013 Social Science Electronic Publishing, Inc. All Rights Reserved.
This page was processed by apollo6 in 0.453 seconds