Intellectual Property and Emerging Technologies
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Intellectual Property and Emerging Technologies

The New Biology

Edited by Matthew Rimmer and Alison McLennan

This unique and comprehensive collection investigates the challenges posed to intellectual property by recent paradigm shifts in biology. It explores the legal ramifications of emerging technologies, such as genomics, synthetic biology, stem cell research, nanotechnology, and biodiscovery.
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Chapter 3: The Current State of Patent Eligibility of Medical and Biotechnology Inventions in the United States

Joshua D. Sarnoff


JOBNAME: Rimmer PAGE: 1 SESS: 6 OUTPUT: Thu Dec 22 13:16:36 2011 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 standards 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 invention 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 categorically excludes ‘laws of nature, physical phenomena, and abstract ideas’4 (science, nature, and ideas), despite the broad categorical language recited 1 2 3 4 Bilski v. Kappos, 130 S. Ct. 3218 (2010). I...

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