Chapter 5 Patent policy and the extension of patentable subject matter Introduction This chapter discusses a variety of aspects relating to the patenting of biological research. An introduction is given to patents, explaining the legal requirements of patentability before discussing the contract’ rationale for the patent system and ‘social the aligned requirements of disclosure and publication. Under this rationale, it is assumed that the patent system rewards inventions which fulfil these requirements and that the system disseminates technical information to inform future innovation. Through a brief description of a number of landmark cases, it will then be shown that the notion of patentable subject matter has expanded in recent decades to include upstream basic biological research. These cases include Diamond v Chakrabarty, Association for Molecular Pathology v Myriad Genetics, the ongoing questions surrounding the WARF patents and the case of Brüstle v Greenpeace. Alongside this account, it will be shown that the patents in question have been the subject of considerable controversy, attracting commentaries from a wide variety of groups including eminent scientists. These comments will be used to highlight a number of concerns about upstream patenting which are elaborated upon in the final part of the chapter. This concluding part will consider the ability of the patent system to cope with upstream biological patents, specifically the ability of the system to capture upstream and disseminate the related scientific information. ‘inventions’ Modern patent rights Intellectual property (IP) is a collective term which refers to form of original “any creation that can be bought or sold”. There are a number of forms of IP rights (IPRs), each covering a different type of creation’ including trademarks, designs, ‘original copyrights and, the focus of this thesis, patents. Today, patents are used to protect inventions. A patent provides the patent owner exclusive rights to control the use of a patented invention, preventing others from making, using, importing or selling the invention in the territory where the patent has been granted for up to 20 years. The
Chapter 5 Patent policy and the extension of patentable subject matter Introduction This chapter discusses a variety of aspects relating to the patenting of biological research. An introduction is given to patents, explaining the legal requirements of patentability before discussing the ‘social contract’ rationale for the patent system and the aligned requirements of disclosure and publication. Under this rationale, it is assumed that the patent system rewards inventions which fulfil these requirements and that the system disseminates technical information to inform future innovation. Through a brief description of a number of landmark cases, it will then be shown that the notion of patentable subject matter has expanded in recent decades to include upstream basic biological research. These cases include Diamond v Chakrabarty, Association for Molecular Pathology v Myriad Genetics, the ongoing questions surrounding the WARF patents and the case of Brüstle v Greenpeace. Alongside this account, it will be shown that the patents in question have been the subject of considerable controversy, attracting commentaries from a wide variety of groups including eminent scientists. These comments will be used to highlight a number of concerns about upstream patenting which are elaborated upon in the final part of the chapter. This concluding part will consider the ability of the patent system to cope with upstream biological patents, specifically the ability of the system to capture upstream ‘inventions’ and disseminate the related scientific information. Modern patent rights Intellectual property (IP) is a collective term which refers to “any form of original creation that can be bought or sold”. There are a number of forms of IP rights (IPRs), each covering a different type of ‘original creation’ including trademarks, designs, copyrights and, the focus of this thesis, patents. Today, patents are used to protect inventions. A patent provides the patent owner exclusive rights to control the use of a patented invention, preventing others from making, using, importing or selling the invention in the territory where the patent has been granted for up to 20 years. The
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