By Hal Wegner --
The patent challengers in the Myriad case placed great stock in the argument that claims to "isolated DNA" (because of their alleged breadth) created a "research preemption." The argument is keyed to recent Supreme Court precedent such as Mayo v. Prometheus. In their certiorari petition a year ago in Myriad, the patent challengers argued that patents "preempt researchers . . . and pose[ ] a serious threat to scientific freedom and advancement."
The Federal Circuit today, and the Supreme Court the Next Time: While it appears that a split panel at the Federal Circuit may very well reject this argument, the more fundamental point is not addressed by the patentees that makes appellate proceedings at the merit stage at the Supreme Court problematic.
To deal with that point, the more fundamental question must be asked: Given a public right to experiment "on" a patented invention, how then does the grant of any patent "preempt" research? This issue is addressed in a new paper, Can Any Patent "Preempt" Follow-On Research?
Hal Wegner is a partner at Foley & Lardner LLP and the former Director of the Intellectual Property Law Program and Professor of Law at George Washington University Law School.
We thank Mr. Wegner for allowing us to provide a copy of his paper to Patent Docs readers.
In this paper Hal Wegner goes down a rabbit hole that nobody was even talking about in Prom or any other case.
/facepalm Hal.
Seriously bro? Nobody cares about your "follow-on research". What they care about is being able to use the judicially excepted subject matter without having to consult the patentee or else face damages and a possible injunction.
How you can so miss the point is beyond me. I mean reading out of context is one thing, but seriously bro? Don't take it to the extreme.
Posted by: 6 | July 30, 2012 at 12:33 PM
" What they care about is being able to use the judicially excepted subject matter without having to consult the patentee or else face damages and a possible injunction. "
The claims do not "pre-empt" anyone from studying any "natural" animals (including humans) containing any mutation. Is there some other "judicially excepted subject matter" you are thinking of, 6?
Posted by: Keep It Real | July 30, 2012 at 03:39 PM
"The claims do not "pre-empt" anyone from studying any "natural" animals (including humans) containing any mutation. Is there some other "judicially excepted subject matter" you are thinking of, 6?"
Mhmmm. Check the previous 12 threads on this site or the last 10 threads on PO for my lengthy discussion of that subject.
Posted by: 6 | July 30, 2012 at 04:28 PM
"Check the previous 12 threads on this site or the last 10 threads on PO for my lengthy discussion of that subject."
Oh, I've checked them already. They are lengthy but they also miss the point entirely. What is the "judicially excepted subject matter" being removed from the public domain by Myriad's composition claims? Let me guess: you don't know and you're hoping some judge is better at kicking up dust than you.
Good luck with that.
Posted by: Keep It Real | July 30, 2012 at 05:27 PM
It is easy to copy what others have done. What the patent system encourages is the development of NEW technologies (if you cannot have what others have created, you have to make something different). Hal Wegner does a great job of explaining why and how the patent system does this.
Posted by: Logicallady | August 01, 2012 at 02:22 PM