Why it Might Be Time to Eliminate Genomic Patents, Together with the Natural Extracts Doctrine Supporting Such Patents

Abstract

The purpose of recognizing enforceable rights in intellectual property in the United States is to “promote the progress of science and useful arts.” Given the changing landscapes of technologies, it is critical that policies and laws be continually adjusted to reflect the needs of new technologies. When the law tries to shield from – rather than confront – new technological realities, patents subvert rather than promote technological progress. This paper explores how the natural extracts doctrine, established over a century ago to allow purified compounds to be patented at a time when biochemistry was more alchemy than science, subverts rather than promotes progress in the modern biotechnological context. This paper argues that the natural extracts doctrine, together with the various isolation-based product patents – including gene product patents – that it has spawned, must be promptly abandoned or at least radically reduced in scope. Such patents not only violate the prohibition against the patenting of nature, but are also not commensurate with the underlying contributions made to the arts. In a proper patent regime, incentives given for today’s innovation should be appropriate for today's innovations, and not be given at the expense of tomorrow’s incentives. The paper concludes by offering a glimpse of what a patent system without the natural extracts doctrine might look like. It shows how a reinvigorated subject matter requirement and enablement requirement can properly incentivize innovations in biotechnology – sustainably and for the long term – without impeding the future.

Keywords: gene patents, subject matter eligibility, patents. 35 u.s.c. 101, natural products, patentability, Gottschalk v. Benson, Parker v. Flook, Diamond v. Diehr, Bilski v. Kappos

JEL Classification: O34