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Archive for the ‘Biotechnology’ Category

GE says bye-bye to biotech. … So it goes.


February 25, 2019  — The Wall Street Journal headline reads: GE to Sell Its Biotech Business for $21 BillionI now know for certain that we’re in a topsy-turvy world.

General Electric logoBack in 1980 it was lawyers for the General Electric company that persuaded the U.S. Supreme Court to affirm, in the legendary decision of Diamond v. Chakrabarty, that even a living organism could be the subject of a United States patent.   Numerous commentators have observed that this green-light signal from the legal system paved the way for billions of dollars of investment in biotechnology research and development, spurring the fruition of this nascent field.  These include David Kappos, who, as the Director of the U.S. Patent and Trademark Office, said so in a speech to the international convention of the Biotechnology Industry Organization in 2011 (click here for BIOtechNOW’s July 5, 2011 article about his speech).

But since then, the Court has eroded the effect of that formerly auspicious doctrine.  For example, in 2013, the Ass’n of Molecular Pathologists  v. Myriad Genetics case held that even a unique and non-obvious DNA molecular probe wouldn’t be patentable if the sequence of its nucleotides is the same as those of a portion of a naturally occurring chromosome. 

Probably it’s mere coincidence that GE is now divesting its biotech arm.

But as Kurt Vonnegut would remind us  …. So it goes.

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.

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.

US PTO to Hold Hearings on Effects of Patents on Genetic Testing

Two hearings have been scheduled by the US PTO on the effect of patents for Genetic Testing, to support the study that the PTO is mandated by the Leahy-Smith America Invents Act (“AIA”) to generate for Congress.

The first of the hearings is today.  It will be broadcast via the Web.

The second of the hearings will be March 9 in San Diego.  My colleague Prof. Chris Holman, incoming Executive Editor of Biotechnology Law Report, is scheduled to testify at that hearing.

Each of these agendas provides the logon information for the web broadcasts of the hearings.

Further information from the US Patent and Trademark Office on implementation of the America Invents Act is available here.



2018 Martindale-Hubbell® Peer Review Rating of AV Preeminent® Gerry Elman has received a 2018 Martindale-Hubbell® Peer Review Rating of AV Preeminent®
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