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© Copyright 2005 Oblon, Spivak, McClelland, Maier & Neustadt P.C.
Patenting People: A Question or Law or Patenting People: A Question or Law or PolicyPolicy
Patenting People: A Question or Law or Patenting People: A Question or Law or PolicyPolicy
Stephen G. Kunin
Senior Counsel
November 2006
Stephen G. Kunin
Senior Counsel
November 2006
The LeversThe LeversThe LeversThe Levers
Congress
Courts
USPTO
Patent Applicants
Third Parties
Congress
Courts
USPTO
Patent Applicants
Third Parties
CongressCongressCongressCongress
Authorized by Art. I., § 8, cl. 8 to enact the Patent Laws Promote progress of useful arts by
establishing quid pro quo of adequate disclosure to public of new, useful and non-obvious invention in exchange for right to exclude others from making, using, selling,,or offering to sell invention for period of years
Authorized by Art. I., § 8, cl. 8 to enact the Patent Laws Promote progress of useful arts by
establishing quid pro quo of adequate disclosure to public of new, useful and non-obvious invention in exchange for right to exclude others from making, using, selling,,or offering to sell invention for period of years
Patent StatutePatent StatutePatent StatutePatent Statute
35 U.S.C. §§ 1-300 enacted in 1952
35 U.S.C. § 101 Subject matter eligibility
Machine, composition of matter, manufacture
process Utility
35 U.S.C. §§ 1-300 enacted in 1952
35 U.S.C. § 101 Subject matter eligibility
Machine, composition of matter, manufacture
process Utility
Subject Matter EligibilitySubject Matter EligibilitySubject Matter EligibilitySubject Matter Eligibility
“Anything under the sun that is made by man”
Exclusions Abstract ideas Laws of nature Natural phenomena
“Anything under the sun that is made by man”
Exclusions Abstract ideas Laws of nature Natural phenomena
Judicial Interpretation of Subject Judicial Interpretation of Subject Matter EligibilityMatter Eligibility
Judicial Interpretation of Subject Judicial Interpretation of Subject Matter EligibilityMatter Eligibility
Diamond v. Chakrabarty, 447 U.S. 303 (1980): man-made living organismsDiamond v. Diehr, 450 U.S. 185 (1981): computerized manufacturing processJ.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 122 S. Ct. 593 (2001): sexually & asexually reproducible plantsState Street Bank & Trust v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir), cert. denied, 119 S. Ct. 851 (1999): business methods
Diamond v. Chakrabarty, 447 U.S. 303 (1980): man-made living organismsDiamond v. Diehr, 450 U.S. 185 (1981): computerized manufacturing processJ.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 122 S. Ct. 593 (2001): sexually & asexually reproducible plantsState Street Bank & Trust v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir), cert. denied, 119 S. Ct. 851 (1999): business methods
Supreme CourtSupreme CourtSupreme CourtSupreme Court
Left question of extension of patent process to “legislative process”Congress “best equipped to weigh competing economic, social and scientific considerations”Court “without competence” to entertain morality-laden “high policy” argumentsRole is “narrow one of determining what Congress meant by the words it used in the statute; once that is done,… powers are exhausted…[U]ntil Congress takes…action, …Court must construe the language of § 101 as it is.”
Left question of extension of patent process to “legislative process”Congress “best equipped to weigh competing economic, social and scientific considerations”Court “without competence” to entertain morality-laden “high policy” argumentsRole is “narrow one of determining what Congress meant by the words it used in the statute; once that is done,… powers are exhausted…[U]ntil Congress takes…action, …Court must construe the language of § 101 as it is.”
UtilityUtilityUtilityUtility
Specific, substantial & credible utilityReal world value having immediate benefit to public in currently available form1817 Justice Story “moral” utility requirement in Lowell v. Lewis, 15 Fed. Cas. 1018, No. 8568 (C.C. Mass. 1817)(Story, J.) could be overcome with a showing of at least one moral or legal purpose for invention
Specific, substantial & credible utilityReal world value having immediate benefit to public in currently available form1817 Justice Story “moral” utility requirement in Lowell v. Lewis, 15 Fed. Cas. 1018, No. 8568 (C.C. Mass. 1817)(Story, J.) could be overcome with a showing of at least one moral or legal purpose for invention
Modern View of UtilityModern View of UtilityModern View of UtilityModern View of Utility
Federal Circuit has held that the antiquated law of utility is not law today: Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999) Congress never intended that
patent laws displace police powers of States to promote health, good order, peace and general welfare
Federal Circuit has held that the antiquated law of utility is not law today: Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999) Congress never intended that
patent laws displace police powers of States to promote health, good order, peace and general welfare
Patenting PeoplePatenting PeoplePatenting PeoplePatenting People
Current statutes and case law make it difficult for USPTO rejections to be sustained when challenged
Reliance on the 13th Amendment to the Constitution is speculative
Current statutes and case law make it difficult for USPTO rejections to be sustained when challenged
Reliance on the 13th Amendment to the Constitution is speculative
USPTO Policy ApproachUSPTO Policy ApproachUSPTO Policy ApproachUSPTO Policy Approach
1077 O.G. 24 (April 21, 1987) Notice from Commissioner Donald J. Quigg re Non-naturally Occurring Non-Human Animals are Patentable Under Section 101
Media Advisory: Facts on Patenting Life Forms Having a Relationship to Humans (April 1. 1998)
1077 O.G. 24 (April 21, 1987) Notice from Commissioner Donald J. Quigg re Non-naturally Occurring Non-Human Animals are Patentable Under Section 101
Media Advisory: Facts on Patenting Life Forms Having a Relationship to Humans (April 1. 1998)
Policy ApplicationsPolicy ApplicationsPolicy ApplicationsPolicy Applications
Patents granted on non-human animals (USPN 4,736,866)(Harvard Mouse)
Human-animal chimera applications denied
Cloning patent (USPN 6,211,429)(U. of Mo.)
USPA No. 09/828,876 mammalian fetus produced by cloning (U. of Mass.)
Patents granted on non-human animals (USPN 4,736,866)(Harvard Mouse)
Human-animal chimera applications denied
Cloning patent (USPN 6,211,429)(U. of Mo.)
USPA No. 09/828,876 mammalian fetus produced by cloning (U. of Mass.)
Congressional ResponseCongressional ResponseCongressional ResponseCongressional Response
Brownback Amendment No. 3843, June 13, 2002 to Terrorism Risk Insurance Act of 2002 to amend § 101 to exclude humans in any stage of development failed
Weldon Amendment to USPTO Appropriations Legislation remains in effect to limit spending by USPTO on granting patents on humans in any stage of development
Brownback Amendment No. 3843, June 13, 2002 to Terrorism Risk Insurance Act of 2002 to amend § 101 to exclude humans in any stage of development failed
Weldon Amendment to USPTO Appropriations Legislation remains in effect to limit spending by USPTO on granting patents on humans in any stage of development
BattlegroundBattlegroundBattlegroundBattleground
Applicants to seek patents on man-made humans: economic incentives of patent system
Third parties who file protests and requests for re-examination of patents that are believed to be morally offensive
USPTO as decision-maker
Applicants to seek patents on man-made humans: economic incentives of patent system
Third parties who file protests and requests for re-examination of patents that are believed to be morally offensive
USPTO as decision-maker
Questions of MoralityQuestions of MoralityQuestions of MoralityQuestions of Morality
No bright line testConsiderations apart from sections 101, 102, 103 and 112 of 35 U.S.C.Balancing interests
Merits and advantages in treating human diseases
Protecting environment Avoiding cruelty to animals
Unacceptability: societal normsPublic abhorrence
No bright line testConsiderations apart from sections 101, 102, 103 and 112 of 35 U.S.C.Balancing interests
Merits and advantages in treating human diseases
Protecting environment Avoiding cruelty to animals
Unacceptability: societal normsPublic abhorrence
USPTO Job to Police Patenting People USPTO Job to Police Patenting People Applications Applications
USPTO Job to Police Patenting People USPTO Job to Police Patenting People Applications Applications
USPTO must use its sensitive application warning system to identify patenting people applications
USPTO must find ways to prevent applications from issuing in violation of Weldon Amendment
USPTO is faced with difficult task in absence of clear law as basis to reject applications under other than sections 101, 102, 103 and 112
USPTO must use its sensitive application warning system to identify patenting people applications
USPTO must find ways to prevent applications from issuing in violation of Weldon Amendment
USPTO is faced with difficult task in absence of clear law as basis to reject applications under other than sections 101, 102, 103 and 112
Congressional SolutionsCongressional SolutionsCongressional SolutionsCongressional Solutions
Specifically amend § 101 to exclude patenting humans with definition of human being in any stage of development
Provide general exclusion and give Director of USPTO substantive rule-making authority with reporting requirement to Congress
Specifically amend § 101 to exclude patenting humans with definition of human being in any stage of development
Provide general exclusion and give Director of USPTO substantive rule-making authority with reporting requirement to Congress
Thank YouThank YouThank YouThank You
If you have any questions or comments you can reach me at: [email protected] 703-413-3000 (phone) 703-413-2220 (Fax)
If you have any questions or comments you can reach me at: [email protected] 703-413-3000 (phone) 703-413-2220 (Fax)