Patenting Medical and Genetic Diagnostic Methods

Patenting Medical and Genetic Diagnostic Methods

Eddy D. Ventose

This well-researched book explores in detail the issue of patenting medical and genetic diagnostic methods in the United States. It examines decisions of the Patent Office Boards of Appeal and the early courts on the question of whether medical treatments were eligible for patent protection under section 101 of the Patents Act. It then traces the legislative history of the Medical Procedures and Affordability Act that provided immunity for physicians from patent infringement suits. After considering the Supreme Court’s jurisprudence on patent eligibility, the book then comprehensively sets out how the Federal Circuit and the Supreme Court have dealt with the issue, paying close attention to the Supreme Court’s recent decision in Bilski and Prometheus.

Chapter 5: Consideration by the Federal Circuit

Eddy D. Ventose

Subjects: environment, biotechnology, innovation and technology, biotechnology, law - academic, health law, intellectual property law

Extract

As was seen in Chapter 2, in the early period, before the decisions of the Court in Benson, Flook and Diehr, the Federal Circuit opined on the issue of whether medical and diagnostic patents were patentable in the early period. In the 1980s, it produced some of its more direct decisions that centred on that question; however, it was in the period after the decision of the Court in Laboratory Corporation that the plethora of decisions of the Federal Circuit in relation to medical patents commenced. It is important to consider these cases because the majority of decisions on this area were considered in the Federal Circuit and its views on the patent eligibility of medical and diagnostic methods have certainly influenced the Court when it finally decided the issue in Prometheus. This chapter considers in detail the decision of the Federal Circuit before and after it became active in delineating the issues at the heart of patent-eligibility of medical and diagnostic methods – which it did in no less than five decisions handed down in 2010 and 2011. These decisions directly provide the backdrop against which the patentability of medical patents must be assessed subject, of course, to the definitive statement of the Court in Prometheus.

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