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May 08, 2014


Two scientists devise a new process- how to clone a mammal - and make something that's never been made before - a cloned mammal. The US patent system devises a way to grant a patent on the process but deny not only substantive patentability but patent-eligibility for the product of the process. Welcome to the club of third-world countries, USA. Judge Rich must be rolling over in his grave.


This decision doesn't surprise (or dismay) me. As Dyk's opinion clearly points out (and I'm certainly no fan of Dyk), the "unique" features of this cloned animal need to be put into the claim language. Unfortunately for the applicant here, that wasn't done. All the claim recites is a "cloned" animal which, while it may have been done "by the hand of man," doesn't establish why it's different from Mother Nature and thus fails the "new" component of 35 USC 101.

The thing is, however, you are talking about organisms in which one normally automatically has an ownership interest in anyway. Is it really necessary to superimpose a second form of proprietary rights over cattle and other farm animals?


There is a clear difference in the ownership aspect between the traditional form (an object of property itself) and the patent form (an object divorced from any sense of tracing an item's particular "hands-on" as it were objective possession).

This is a fundamental understanding point in the allowance of a method and a non-allowance of the item.

Allowing a patent on the method does not foreclose other methods of obtaining the item , preserving the notion that the item itself has the attribute of "freely available to all men." One should NOT be confused by this statement to think that OTHER property laws do not apply, as surely, the land I own gives my ownership of the PARTICULAR instances of all natural things on that particular land. But is should be readily evident that we as a society cannot countenance the corollary view that because I own particular land, and that a particular item can be found on that land, that I then can claim ownership of that TYPE of particular item, no matter where else that item is to be found.

Let's suppose I invent the photocopier and begin photocopying Shakespeare's plays. I'm no more the author of Hamlet as a result of my copying an instance of it than I am the inventor of some naturally occurring product I might develop some method of replicating. The doctrine that seems to be emerging is logical: the inventor must have put some inventiveness, some creativity into the form of the thing, into the design of the thing, and not merely copied it from someone else or nature.

David Koepsell,

Your attempt at finding an "emerging doctrine" relating patent 101 to copyright law is a bit of stretch.

That anyone knowledgeable in patent law would even think to go there..., well, I am...

David K.

I oompletely agree with Skeptical that you should avoid mixing copyright law with patent law. What's constitutes inventorship in patent law is vastly different from what constitutes authorship in copyright law. Unfortunately, these two concepts are often confused by academics.


The next thing you know is that we will have people calling for a Fair Use equivalency in patent law, further denigrating the exclusive right.

It's an analogy, EG. Analogies are common in legal reasoning. In this case, it's useful for understanding the reasoning of why making a copy of some composition of matter isn't inventing that composition of matter (anymore than copying Hamlet is authoring Hamlet) as apparently the court seems to agree.

Trying to bring some logic to the debate is all, and while I'm no patent lawyer, the logic I have argued for seems to be catching on these past few years when it comes to products of nature.

Cheers to all, and may the trend continue. ;)

David Koepsell,

No one is saying that the item is not an analogy, nor is anyone saying that analogies are not used in legal discussions.

What IS being said is that your analogy is not helpful.

It is not helpful because it obfuscates rather than clarifies. It muddles a concept from copyright law that does not have a place in patent law.

I would also point out that you are deluding yourself if you think that your repeating an inapt analogy is "catching on," and that you are somehow even remotely responsible for any trend in patent law.

"In spite of" may be a better characterization.

Skep... relax, I never said I was in any way responsible at all (read carefully), merely that similar reasoning to that which I made long ago to skeptical people like yourself has nonetheless been winning the day. Indeed, probably "in spite of" my arguments and "despite" yours, justice prevails and that's what matters.

That's just it, David Koepsell, I have read (even read carefully), and that is why I mention that nothing at all like "similar reasoning" is at play with the "reasoning" you advance.

If anything, you are retarding that movement of justice, as obfuscation and befuddlement can only get in the way.

It is not bad to celebrate justice. It is dangerous to celebrate irrational behavior, associate that irrational behavior with the march of justice and become lock stepped in that fantasy.

I've read up on some of your exploits. I suggest that you do not lose touch with reality and misconstrue the law.

Skeptical, yes, my "exploits" if you want to call writing, speaking, and general academic work "exploits" why, go ahead ... I have written quite a bit on the subject, and the reasoning I explored reflects very closely the current "product of nature" cases. I was encouraged by some of your earlier comments when you seemed almost to get the type/token distinction we talk about in logic. In any case, here are some excerpts from my 2009 book, published before the Myriad case even began. Please do tell me in which respect they did not anticipate or reflect the reasoning that seems at work in Myriad and in re Roslin:

"Each instance of the un-engineered human genome is a naturally occurring object. Its existence as an abstracted ideal which is instantiated in you, me, and every other human, in its present form has no element of the type of expression described above. There is no mixing of labor with any present human genome’s form, nor is there any human intention involved." (Who Owns You? p. 111-12)

"All copyrightable and patentable objects are intentionally produced man-made objects and they are not merely ideas. Your DNA, or mine, or any other non-engineered being, is not an expression according to this description of intellectual property, and neither is any naturally-occurring subset of a genome (such as a gene or a SNP)." (Ibid, p. 112)

"Chemical formulas, for example, or natural laws, cannot be copyrighted or patented. The seminal Supreme Court case Diamond v. Diehr, specifically excluded from patentability “laws of nature, natural phenomenon and abstract ideas.” (Ibid, p. 113)

"Many gene patents are perfectly valid both legally and ethically. All valid patents use products of nature in some form, but they do not extend to protect the naturally-occurring parts of the invention. Most patents on new chemicals involve not just a patent on the new compound, but also a patent on the process of synthesizing the compound.These sorts of patents provide guidance for how gene patents can legally issue and still also promote innovation. New genes could of course be patented if they are man-made. New combinations of genes can also be patented if they are the products of human intention." (Ibid, p. 114)

"Many gene patents issue now in which the current use of the gene is in merely finding the same gene. This is quite absurd. It is like patenting the element iron, and then claiming that the use of iron is in finding iron, or patenting the Rock of Gibraltar and then claiming that the utility of the patent is in locating the Rock of Gibraltar." (Ibid., p. 115)

here's a general statement about the role that ontology plays in clarifying the underlying concepts too: http://whoownsyou-drkoepsell.blogspot.mx/2013/06/philosophy-and-public-policy.html

And yes, I do think it's just that the courts are finding that products of nature are distinct from artifacts due to their lack of human design and intention, which is what I have long argued, and what seems to me to be reasonable, and logical, and still leaves lots of room for patenting things that are are the products of human ingenuity.

In any event, you'll want some final snarky word no doubt, so knock yourself out.

David Koepsell,

Snark is in the eye of the beholder.

My posts have directly asked you not to conflate different legal realms, and failing that, to recognize the difference between ANY march to justice and your laying claim to contributing such a march (your continued view that you 'reflect' actual theory is simply as off as your conflation).

You seem unwilling to recognize what I am actually saying.

Whether you are aware of this or not, well, I remain...

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