Tuesday, March 20, 2012

The Supreme Court Discusses Bohannon and Hovenkamp, Creation Without Restraint

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.


| Permalink

TrackBack URL for this entry:


Listed below are links to weblogs that reference The Supreme Court Discusses Bohannon and Hovenkamp, Creation Without Restraint:


Dear Professor Ghosh,

Nice to read your blog. I have a small query from you as we are unaware of the antitrust Laws of US.

1. Is it a uniform law across US, or varies with states?
2. Can a court take Suo Moto on the complaint?
3. FOR India a US company has entered into an exclusive contract with the Chinese company(the only source) & thus no company is India is able to procure this material from CHINA. Does the action of this US company(thru its Indian Subsidiary) comes under the preview of Antitrust Laws of US?

Your reply will be of great help to us.


Posted by: Ajit Pal Singh | Mar 21, 2012 1:54:05 AM

Post a comment