Sarnoff, Joshua D. --- "The Current State of Patent Eligibility of Medical and Biotechnology Inventions in the United States" [2012] ELECD 133; in Rimmer, Matthew; McLennan, Alison (eds), "Intellectual Property and Emerging Technologies" (Edward Elgar Publishing, 2012)

Book Title: Intellectual Property and Emerging Technologies

Editor(s): Rimmer, Matthew; McLennan, Alison

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781849802468

Section: Chapter 3

Section Title: The Current State of Patent Eligibility of Medical and Biotechnology Inventions in the United States

Author(s): Sarnoff, Joshua D.

Number of pages: 33

Extract:

3. The current state of patent eligibility
of medical and biotechnological
inventions in the United States
Joshua D. Sarnoff

This chapter briefly explains the current (and conflicting) doctrinal stand-
ards in the United States for exclusions from patent eligibility that apply to
the medical and biotechnology fields in light of the decision of the Supreme
Court of the United States in Bilski v. Kappos.1 The United States Court of
Appeals for the Federal Circuit (Federal Circuit), albeit reluctantly, and the
United States Patent and Trademark Office (USPTO), perhaps more
enthusiastically, have begun to employ these standards to claims of inven-
tion that apply new discoveries of medicine and biotechnology. Unless and
until a better theory of patent eligibility is supplied, the results will likely
remain both uncertain and unsatisfying to all concerned.2
In Bilski, the Supreme Court held that business methods may be eligible
subject matter for patents, so long as the claimed, practical applications are
not merely `abstract ideas' and so long as other claim limitations are not
merely `field of use' limitations or `token post-solution components' added
to the abstract idea.3 In so holding, the Court reiterated as a matter of
long-standing precedent and stare decisis that the patent system categori-
cally excludes `laws of nature, physical phenomena, and abstract ideas'4
(science, nature, and ideas), despite the broad categorical language recited

1
Bilski v. Kappos, 130 S. Ct. 3218 (2010).
2
I provide such a theory in Sarnoff, J. (2011), `Patent Eligible ...