Anticipating Patentable Subject Matter

The United States ◽

United States Supreme ◽

The Public ◽

Public Benefit ◽

Human Genes ◽

Gene Patenting

By the summer of 2013, the United States Supreme Court should issue an opinion in Myriad v. AMP, a case dealing with the patentability of human genes, including "cDNA" molecules that are created in the laboratory. Opponents of gene patenting have argued that such molecules should be deemed unpatentable "products of nature" because, statistically, such molecules might sometimes be fortuitously created in human cells. But this argument improperly imports into patent law's section 101 subject matter analysis the doctrine of inherency from section 102's provisions on novelty. And, if inherency is to be imported into section 101, the proper standard for patentability would be the "public benefit" criteria that has been developed in section 102 consideration of inherency. Under the "public benefit" standard, Myriad's cDNAs would constitute patentable subject matter.

The Inventive Concept in Alice Corp. v. CLS Bank Int'l

10.31235/osf.io/67knf ◽

2016 ◽

Cited By ~ 6

Author(s):

Dan Burk

Keyword(s):

United States ◽

Supreme Court ◽

Subject Matter ◽

The United States ◽

European Patent ◽

United States Supreme ◽

European Patent Convention ◽

Short Essay

In its recent patentable subject matter opinion in Alice Corp. v. CLS Bank Int'l, the United States Supreme Court articulated a two-step patent eligibility test that hinges on the presence of an "inventive concept" in the patent claims. This short essay considers the connection between the "inventive concept" requirement in the Alice Corp. test and the requirement of an "inventive step" or non-obviousness requirement for patentability, by relating the Supreme Court's holding to similar decisions considering patentable subject matter under the European Patent Convention.

Edifying Thoughts of a Patent Watcher: The Nature of DNA

10.31235/osf.io/uz84v ◽

2016 ◽

Author(s):

Dan Burk

Keyword(s):

Innovation Policy ◽

The United States ◽

The Other ◽

United States Supreme ◽

Human Genes ◽

Material Environment ◽

Myriad Genetics ◽

Gene Patenting

In the pending case Myriad Genetics v. Association for Molecular Pathology, the United States Supreme Court will consider the patentability of human genes under the "product of nature" doctrine. Patentable subject matter is generally held to encompass materials and artifacts created by humans, and not that which exists independently in nature. However, it is not clear that this is a meaningful or helpful distinction. Given on one hand that the concept of a gene is a human construct, and on the other hand that all human creations are drawn from the material environment, the question of gene patenting is better addressed as a matter of innovation policy than of imponderable labeling.

Objectivity and Advocacy in Forensic Psychiatry after Ake v. Oklahoma

The Journal of Psychiatry & Law ◽

10.1177/009318538701500203 ◽

1987 ◽

Vol 15 (2) ◽

pp. 177-188

Author(s):

C. Robert Showalter ◽

W. Lawrence Fitch

Keyword(s):

United States ◽

Forensic Psychiatry ◽

The United States ◽

Mental Condition ◽

United States Supreme ◽

The Public ◽

Justice Process ◽

Criminal Justice Process ◽

Proper Subject

In its landmark opinion in Ake v. Oklahoma, the United States Supreme Court enunciated a broad right to psychiatric assistance for criminal defendants who raise the defense of insanity or whose mental condition is relevant to sentencing in a capital case. Recognizing such assistance as essential to the proper functioning of the adversary process in cases in which an issue concerning the defendant's mental condition has been raised, the opinion may be read to pose an ethical dilemma for the psychiatrist who regards his or her assessment as objective and, hence, not a proper subject for adversarial presentation or inquiry. The authors contend, however, that rather than inviting psychiatrists to compromise their objectivity in these cases, in fact the Supreme Court's ruling challenges psychiatrists to demonstrate and assure their objectivity by revealing and explaining the bases for their opinions, thereby enhancing their utility in the criminal justice process and, ultimately, their credibility in the minds of the public.

James Iredell

North Carolina's Revolutionary Founders ◽

10.5149/northcarolina/9781469651200.003.0009 ◽

2019 ◽

pp. 178-196

Author(s):

Willis P. Whichard

Keyword(s):

United States ◽

Supreme Court ◽

Federal Court ◽

The United States ◽

United States Supreme ◽

George Washington ◽

Political Activities ◽

Revolutionary Era ◽

The Public

This essay examines the public career of James Iredell, who was probably Revolutionary-era North Carolina’s most influential propagandist. His first published essay, which appeared in September 1773, defended the jurisdiction of colonial courts in the foreign attachment controversy, and he was one of the first Whig writers to reject the sovereignty of Parliament in America. During the Revolution, Iredell continued to write on behalf of the American cause, but financial woes limited his political activities. During the debate over the ratification of the Constitution, however, Iredell emerged as one of North Carolina’s most energetic Federalists, and George Washington rewarded him with an appointment to the United States Supreme Court. Like many southern Federalists, Iredell supported the new government, but was wary of pushing federal power too far, and in his best known opinion, a dissent in Chisholm v. Georgia (1793), he argued that a state could not be sued in federal court without its consent.

It’s Not So Obvious

10.37419/lr.v1.i3.8 ◽

2014 ◽

Vol 1 (3) ◽

pp. 729-750

Author(s):

Samuel Reger

Keyword(s):

United States ◽

Supreme Court ◽

Subject Matter ◽

The United States ◽

United States Supreme ◽

Patent Claim ◽

Specific Approach ◽

Court Of Appeals ◽

Federal Circuit

Currently, the United States Supreme Court requires a fact-specific approach to determine whether a patent claim is eligible subject matter under 35 U.S.C. § 101, even though, traditionally, this has been considered a question of law. However, recently, the United States Court of Appeals for the Federal Circuit introduced the “manifestly evident” standard. The court held that when it is not manifestly evident that a claim is directed to a patent-ineligible abstract idea, then that claim must be deemed patent-eligible subject matter. This Comment suggests that the manifestly evident standard, or one similar to it, will reduce litigation costs. This is because, under the current fact-specific requirements, it may become commonplace for courts to engage in formal claim construction, a costly pre-trial process, to decide whether these requirements are met. But under the manifestly evident standard, courts and litigants will be able to quickly move past the often confusing section 101 to the later sections of the Patent Act, which courts are better prepared to confront.

Supreme Court Behavior in Racial Exclusion Cases: 1935–1960

American Political Science Review ◽

10.2307/1952368 ◽

1962 ◽

Vol 56 (2) ◽

pp. 325-330

Author(s):

S. Sidney Ulmer

Keyword(s):

United States ◽

Civil Rights ◽

Supreme Court ◽

Subject Matter ◽

Simple Procedure ◽

The United States ◽

The Other ◽

United States Supreme ◽

Racial Exclusion

The United States Supreme Court is often guided by rules of law which make the disposition of cases depend upon singular combinations of circumstances. It is a relatively simple procedure to go through the cases in a subject matter area and compile a list of the facts the justices seem to have considered material to their solution of the issue at hand. But the identification of the peculiar combinations of events which push the decisions in one direction or the other is more difficult. The number of possible combinations is almost endless: with as few as twenty specified circumstances there are more than one million possible combinations. And the weight of a particular circumstance may depend on the combination of factors in which it appears.Fred Kort has pointed to the “concrete differentiation of factual elements” which seem decisive in cases involving such procedural civil rights as protection against unreasonable searches and seizures, coerced confessions, and unfair trial procedures.

Dolly and Alice

10.31235/osf.io/ktazq ◽

2016 ◽

Author(s):

Dan Burk

Keyword(s):

United States ◽

Supreme Court ◽

Subject Matter ◽

Somatic Cells ◽

The United States ◽

United States Supreme ◽

Court Of Appeals ◽

The Supreme Court ◽

Federal Circuit

The opinion of the United States Court of Appeals for the Federal Circuit, In re Roslin Institute, rejecting patent claims to mammals cloned from somatic cells, was rendered about a month before the United States Supreme Court's decision in Alice Corp. v. CLS Bank International. The Alice opinion explicitly sets out the standard for determining whether an invention falls within statutory patentable subject matter. Thus one is thus left to wonder what the Roslin opinion might have looked like had it been decided only a few weeks later, after the Alice decision was published, with the benefit of the Supreme Court's further direction on patentable subject matter. In this essay I explore whether in hindsight the Alice standard might have dictated a different outcome in Roslin, suggesting how the two-part test articulated by the Supreme Court in Alice might apply to a "products of nature" analysis for cloned mammals. Drawing on that analysis, I then use the Roslin case as a vehicle to highlight certain issues with the Supreme Court's current subject matter jurisprudence as applied to biotechnology. By juxtaposing Dolly with Alice, it becomes clear that the Supreme Court has revivified a number of dormant biotechnology patent problems in the guise of subject matter analysis.