Tuesday, March 20, 2012
Posted by Shubha Ghosh
A few weeks ago we hosted an online symposium of IP and antitrust scholars commenting on the new book by Professors Chiristina Bohannon and Herbert Hovenkamp, Creation Without Restraint. The reviewers offered strong and generally positive feedback, but the best endorsement came from the US Supreme Court in its Mayo v Promethues decision, published March 20, 2012, and linked above. The case dealt with a patent on a medical diagnostic technique was per se unpatentable because it constituted a law of nature, rather than an inventive application of a law of nature. The Court ruled that the patent of which Prometheus was the exclusive licensee covered only a law of nature and did not offer any patentable application of the biomedical correlation at issue. Citing Bohannon and Hovenkamp several times, the unanimous opinion authored by Justice Breyer pointed to the bottlenecks and adverse effects on follow-on invention and research and developlment if a patent was granted to a law of nature. In the opinion of Professor Ghosh, Justice Breyer's opinion is one of the clearest statements of the policies underlying excluding laws of nature from patentable subject matter. At the same time, the opinion leaves open how the Court's approach will be applied in practice. On the first point, we have Bohannon and Hovenkamp to thank. On the second, we can blame the difficult disconnect between legal policy and legal practice. Stay tuned to more scholarly commentary and legal developments in this area.