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Patenting Nature: A Problem of History

56 Pages Posted: 26 Sep 2012 Last revised: 20 Jul 2016

Christopher Beauchamp

Brooklyn Law School

Date Written: September 25, 2012

Abstract

The practice of patenting genetic material is currently under sharp attack. Recent litigation has forced the courts to grapple with the doctrinal basis for patenting DNA sequences identical to those found in nature. Faced with conflicting authorities and difficult policy questions, courts have leaned heavily on history to guide — or at least to justify — their decisions.

This article explores the history in question. It traces the patent law’s changing treatment of “products of nature” in an attempt to untangle the origins of present-day patentability arguments. The evidence suggests that the historical foundations of the bar on patenting products of nature are surprisingly shaky.

The article also reveals how isolated biological materials first came to be patented. This task, I argue, requires looking not only to court decisions, but also to the history of patent practice. My principal vehicle for doing so is the case of Parke-Davis & Co. v. H. K. Mulford Co., a century-old decision by Judge Learned Hand, which now stands as a central (and much disputed) precedent for the patenting of DNA sequences. Parke-Davis arose at a key moment in the sociology of intellectual property, when the American pharmaceutical industry first learned to embrace the power of patents. The article shows how Parke-Davis came to prominence in half-understood form during the biotechnology era, and how the decision’s original rationale suddenly seems poised to control the Federal Circuit’s latest thinking on gene patentability.

Keywords: patent, patentability, patentable subject matter, patent history, gene patenting, isolated DNA, product of nature, Learned Hand, Parke-Davis, Myriad

Suggested Citation

Beauchamp, Christopher, Patenting Nature: A Problem of History (September 25, 2012). Stanford Technology Law Review, Vol. 16, 2013; Brooklyn Law School, Legal Studies Paper No. 296. Available at SSRN: https://ssrn.com/abstract=2152105

Christopher Beauchamp (Contact Author)

Brooklyn Law School ( email )

250 Joralemon Street
Brooklyn, NY 11201
United States

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