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Elman on Tech News via Twitter

Supreme Court, snowed by ACLU smear campaign, resurrects archaic requirement of “invention” as a test of patent eligibility.

In their decision June 13, 2013, in Association for Molecular Pathology v. Myriad Genetics, the Supreme Court seems to have been snowed by an anti-patent publicity campaign engineered by a brilliant but diabolical law professor and gullible lawyers at the venerable ACLU.

The opinion of the Court resurrects an archaic requirement of “invention” that was disavowed by Congress in 1952. The late Judge Giles S. Rich, father of the patent statute revision enacted at that time, may no longer rest in peace. See his article: Laying the Ghost of the “Invention” Requirement, 1 AIPLA Q.J. 26-45 (1972), recently reprinted in 41 AIPLA Q.J. 1-28 (2013) with a foreword by Judge Paul R. Michel.  The reprinted article is available online (AIPLA member login required).

And yet, the Court’s Myriad Genetics opinion written by Mr. Justice Thomas states:

The [patentable] Chakrabarty bacterium was new “with markedly different characteristics from any found in nature,” … due to the additional plasmids and resultant “capacity for degrading oil.” …. In this case, by contrast, Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention [emphasis added]. Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry [as to subject matter patent-eligibility].

In Biotechnology Law Report, we’ve chronicled the efforts of anti-intellectual-property activists such as Prof. Ravicher and Jeremy Rifkin to dismantle the U.S. patent system. See the article on Getting Beyond the ACLU and Public Patent Foundation’s Anti-Gene-Patent Grandstanding that I coauthored with Scott Rylan Powell in February 2010.

By hoodwinking the Supreme Court to focus on the “information content” rather than the chemical structure of the polynucleotide described in pertinent patent claims, the ACLU attorneys representing the putative plaintiffs in this case have, unwittingly or hypocritically, endorsed a philosophical worldview of “intelligent design.” Ironically, the ACLU had successfully challenged that unscientific perspective in Dover, Pennsylvania, just a 7 1/2 years ago. See my previous musings on this point.

See also Chris Holman’s Editorial in Biotechnology Law Report

For further explanation and cogent comment, see the Editorial by Prof. Chris Holman posted online at the website of Biotechnology Law Report June 26, 2013.

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