INTELLECTUAL PROPERTY AT THE EDGE: THE CONTESTED CONTOURS OF IP, Rochelle Dreyfuss, Jane Ginsburg & Carol Rose eds., 2014, Forthcoming
18 Pages Posted: 5 Apr 2012 Last revised: 11 Feb 2014
Date Written: April 5, 2012
Decided by the Supreme Court in 1948, Funk Brothers notably required that patent claims covering laws of nature apply those laws in novel or nonobvious ways in order to be eligible for patenting. More recently, the Supreme Court revived and expanded upon Funk Brothers' "inventive concept" approach in Prometheus, justifying its take in part on a "scope theory" of patentable subject matter advocated by the author, Mark Lemley, Michael Risch, and Polk Wagner. This book chapter criticizes the Court's inventive concept jurisprudence as well as its misinformed use of scope theory. Instead, the chapter returns to our original suggestion that patentable subject matter be grounded on a multi-factor, policy-driven test, rather than a bright-line rule that, if read expansively, could be used to invalidate and reject numerous issued and pending patents.
Keywords: patents, patentable subject matter, Funk Brothers, Prometheus, biotechnology, Supreme Court
JEL Classification: Q1,Q16, K0, K2, L65, O3, O31
Suggested Citation: Suggested Citation