Patenting Medical and Genetic Diagnostic Methods
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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.
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Chapter 7: Conclusions

Eddy D. Ventose


Although the issue seems of recent vintage, especially in light of the number of cases currently before the Federal Circuit (and those recently decided by it), the courts in the United States and the USPTO have confronted this issue of whether patent protection should be provided for medical procedures and diagnostic methods for over a century. The question was always whether the legal requirements of patentability were met; and, initially, when medical procedure patents were rejected, it was usually on the basis that they were not new. They were not rejected on the ground that they were incapable of being patentable subject matter. Ex parte Brinkerhoff was the only case that held they were not patentable because of the uncertainty of the results of such treatments. The fallacy of that argument was made clear in ex parte Scherer, which overruled ex parte Brinkerhoff to the extent that it had held medical procedures were not patentable subject matter under section 101 of the Patent Act.

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