How Alice Affects Bioinformatics Patent Applications?

Conference Paper, Wiet Life Science Law Scholars Workshop 2020.

44 Pages Posted: 22 Oct 2020

See all articles by Runhua Wang

Runhua Wang

Chicago-Kent College of Law

Jay P. Kesan

University of Illinois College of Law

Date Written: September 4, 2020

Abstract

The U.S. Supreme Court’s decision regarding patent-eligible subject matter in Alice Corp. v. CLS Bank has been in effect for more than five years, and it has made a significant impact on inventions in the life science industry. Statistics have shown that patent applications and allowance rate decreased significantly after Alice due to legal uncertainties created by this decision.

This work develops a causal empirical study (using difference-in-difference regressions) of Alice and carefully explores how this decision impacts patent examiners and patent applicants in bioinformatics. We deploy and analyze patent application data between 2012 and 2016 for all the U.S. Patent and Trademark Office (“PTO”) office actions in bioinformatics and manufacturing devices, a total of 0.14 million patent office actions and patentee responses. Patent applications in bioinformatics are defined as broad and narrow according to specific technology centers or art units and compared with the patent applications in manufacturing devices before and after Alice.

We find that applicants in bioinformatics, regardless of the broad or narrow definitions, received more Sec. 101 rejections after Alice, and they are positively associated with Alice-based rejections. Alice-based rejections are not always positively associated with other types of statutory rejections (i.e., Sec. 102, Sec. 103, and Sec. 112 rejections). Moreover, applicants gradually filed fewer patent applications, compared to the time period before Alice, with the greatest reduction in patent applications occurring in June 2014, when the Alice decision was delivered by the Supreme Court. In addition, patentees received many more Sec. 101 rejections based on Alice, but these applicants also faced difficulties in overcoming these rejections, especially in the sub-areas of data processing and combinatorial chemistry technology in bioinformatics.

Due to the high costs of patenting on bioinformatics imposed by Alice, this study suggests legislation by Congress is the best hope to bring more certainty to this area of patent law.

Suggested Citation

Wang, Runhua and Kesan, Jay P., How Alice Affects Bioinformatics Patent Applications? (September 4, 2020). Conference Paper, Wiet Life Science Law Scholars Workshop 2020., Available at SSRN: https://ssrn.com/abstract=3686364 or http://dx.doi.org/10.2139/ssrn.3686364

Runhua Wang (Contact Author)

Chicago-Kent College of Law ( email )

565 W. Adams St.
Chicago, IL Illinois 60661
United States

Jay P. Kesan

University of Illinois College of Law ( email )

504 E. Pennsylvania Avenue
Champaign, IL 61820
United States
217-333-7887 (Phone)
217-244-1478 (Fax)

HOME PAGE: http://www.jaykesan.com

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