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Turning Gold to Lead: How Patent Eligibility Doctrine Is Undermining U.S. Leadership in Innovation

21 Pages Posted: 30 Mar 2017 Last revised: 26 Jul 2017

Kevin R. Madigan

George Mason University - Antonin Scalia Law School - Center for the Protection of Intellectual Property

Adam Mossoff

George Mason University - Antonin Scalia Law School, Faculty

Date Written: April 13, 2017

Abstract

Compared to other countries, the United States has long had a “gold standard” patent system. The U.S. has lead the world in securing stable and effective property rights in cutting-edge innovation; most recently, in protecting biotech and computer software inventions. Presenting information from a database of 1,728 patent applications covering the same invention that were recently filed in the U.S., China, and the European Union, this Essay explains how this “gold standard” designation is now in serious doubt. Many of these applications represent pioneering, life-saving inventions, such as treatments for cancer and diabetes. All 1,728 patent applications were granted in both China and the E.U., but the same applications were all rejected in the U.S. as ineligible for patent protection. The cause of these rejections is the U.S. Supreme Court’s recent spate of decisions that upended patent eligibility doctrine, especially as it has been applied to high-tech and biotech innovation. The U.S. patent system is now mired in uncertainty, except for the firm knowledge derived from data on the massive numbers of invalidations of issued patents and of rejections of patent applications. In addition to highlighting some of the inventions from the database of 1,728 applications, this Essay discusses this uncertainty in U.S. patent law, how this is a key change from the innovation-spurring approach of the U.S. patent system in the past, and what this means for the U.S. as other jurisdictions like China and the E.U. become forerunners in securing the new innovation that drives economic growth and flourishing societies.

Keywords: Bilski, Mayo, Myriad, Alice, 101, patentable subject matter, Diamond, Diehr, Chakrabarty, Onco Mouse, PTAB, Federal Circuit, Supreme Court

Suggested Citation

Madigan, Kevin R. and Mossoff, Adam, Turning Gold to Lead: How Patent Eligibility Doctrine Is Undermining U.S. Leadership in Innovation (April 13, 2017). George Mason Law Review, Forthcoming; George Mason Law & Economics Research Paper No. 17-16. Available at SSRN: https://ssrn.com/abstract=2943431

Kevin R. Madigan (Contact Author)

George Mason University - Antonin Scalia Law School - Center for the Protection of Intellectual Property ( email )

3301 Fairfax Drive
Arlington, VA 22201
United States

Adam Mossoff

George Mason University - Antonin Scalia Law School, Faculty ( email )

3301 Fairfax Drive
Arlington, VA 22201
United States
703-993-9577 (Phone)

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