A speaker at a recent gene patent conference I covered suggested that the Supreme Court has of late been retreating back to the ideas of an 1850 case about door knobs.
In Myriad, the court on April 15 will hear oral arguments in a challenge to the patent eligibility of Myriad Genetic’s claims for the BRCA1 and BRCA2 genes associated with breast cancer. The U.S. Court Appeals for the Federal Circuit reversed a district court ruling that found the claims ineligible for patenting since they concerned products of nature.
Laura A. Coruzzi of Jones Day, New York, who coauthored some of Myriad’s briefs in the case, sounded a warning in remarks she made March 11, 2013 at a conference on patents for genes and diagnostics at Cold Spring Harbor Laboratories. She suggested that the current Supreme Court appears to be looking back to the court’s 1850 ruling in Hotchkiss v. Greenwood that concerned the patentability of door knobs.
In the 1850 case, Hotchkiss asserted a patent because he said he improved a door knob by substituting clay for wood. The court held that “there was an absence of that degree of skill and ingenuity which constitutes essential elements of every invention.”
But while Hotchkissdifferentiated between the work of an inventor and that of a skilled mechanic, subsequent courts struggled to make this clearer, using terms such as “flash of genius” and “invented step.” Coruzzi said, “There was also just a single statutory provision governing both patent eligibility and patentability, with the implicit requirement of ‘invention.’”
In 1952, Congress revised the Patent Act, separated patent eligibility requirements from patentability, and replaced vague court-created language of invention with Section 103 and the patent requirement of nonobviousness, which compares what is to be patented to prior art.
“But today’s Supreme Court appears to view the modern Patent Act as actually codifying Hotchkiss on doorknobs in its requirement for more ingenuity and skill than that of a mechanic,” Coruzzi said. “You see this in its ruling in Mayo v. Prometheus [holding thatclaims directed to methods of calibrating drug dosages were not patent eligible because they concerned laws of nature], whichused the term ‘inventive concept,’ ignored the restructuring of 1952, and once again conflated patentability and patent eligibility.”
Time will only tell whether the court’s seeming evocation of door knobs was passing fancy or a trend.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).