37 Pages Posted: 22 Apr 2016
Date Written: April 20, 2016
In Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012), the Supreme Court triggered the most radical redefinition of patent-eligible subject matter in U.S. history by engrafting onto § 101 an inventive application requirement for patenting practical applications of scientific discoveries.
The Nation’s patent statutes, stretching back to the founding era, unmistakably afford patent protection to technological innovations and practical applications of scientific discoveries. The legislative record contains no hint of a second, “inventive application” hurdle for patent-eligibility of scientific discoveries. To the contrary, statutory text and legislative history reflect the clear intention to encourage “inventors and discoverers” to reveal the “mysteries of nature,” whether or not they are inventively applied.
The Supreme Court derived the “inventive application” requirement from Neilson v. Harford (1841). This brief explains the profound misinterpretation that led the Supreme Court astray and urges the Court to grant certiorari in Sequenom v. Ariosa Diagnostics so as to restore the patentability framework that Congress intended.
Keywords: Patentable Subject Matter, diagnostic tests, patent eligibility, scientific discovery, Mayo v. Prometheus, Sequenom, Neilson v. Harford, Flook, Diehr, statutory interpretation
Suggested Citation: Suggested Citation
Menell, Peter S. and Lefstin, Jeffrey A., Restoring the Legislative Framework for Patenting Applications of Scientific Discoveries (April 20, 2016). UC Berkeley Public Law Research Paper No. 2767904. Available at SSRN: https://ssrn.com/abstract=2767904