New Zealand and the Changing Definition of an Invention

By Jared Pottruck

After nearly five years of debate, New Zealand’s legislature voted during the last week of August 2013 to adopt the Patents Bill, which will no longer permit the granting of patents for computer software.[1] While software that currently holds patent protection will be untouched by the new law, going forward, new computer software will not be able to receive patent protection from the New Zealand government.[2] However, new software will be able to receive patent protection if it is simply providing a means to “implement a patentable process” or is part of a piece of improved hardware and the software is the means to achieving that improvement.[3] The Patent Bill accomplishes this by stating that software is “not an invention” and therefore not patentable.[4] This redefinition of what constitutes an invention under New Zealand law, provides the nation with a way around the language of the Agreement on Trade Related Aspects of Intellectual Property Rights, a treaty which they are a party to and would require that they make patents “available for any inventions, whether products or processes, in all field of technology.”[5]

New Zealand officials have stated that they hope the Patent Bill will allow the nation’s technology industry to experience a boom by removing the burdens of costly litigation and licensing on companies.[6] Additionally, the nation sees patents as a means to stifle competition, and believes that moving them on software will make investment in high-tech industry more attractive.[7] In essence, some hope it will create a “safe haven from litigation” where technology companies can thrive.[8] And this goal may be realized sooner than later as New Zealand officials have claimed that some United States technology firms have inquired about moving to the island nation.[9]

However, there are some significant shortcomings to the Patents Bill.  First, there is nothing to stop multinational entities from patenting software in other countries, like the United States, and bringing suit against New Zealand companies abroad.[10]  New Zealand technology companies could be driven to severely limit their potential markets to prevent establishing personal jurisdiction in foreign nations.  This would undermine the bill’s goal of expanding New Zealand’s technology industry.  Secondly, with previously patented software retaining its protection, many basic computer applications are likely already protected.[11] This will likely make it easier for older, more established technology firms to stifle competition by enforcing these patents that relate to fundamental computer code.[12]

New Zealand is not the only nation addressing patents on software, as there has been a debate going on for ten years in the European Union as to whether software should be afforded protection.[13] The United States has also been trying to address this issue.  The Government Accountability Office recently completed a study on software patents and concluded that they are ineffective.[14] At least six bills have been introduced in Congress that would limit patent protection within the last year, all of which have failed to gain traction.[15] This is likely due to lobbying by large technology companies that benefit from large patent stockpiles, such as Samsung and Apple.[16]

Since it seems unlikely that software patents will be banned by statute, the courts will certainly be looked to as a mechanism for change.[17] Currently software meets the requirements for patentability based on the decision in the United States Court of Appeals for the Federal Circuit case of In re Alappat.[18] Therefore, a successful attack on that case in the Supreme Court would cause the more restrictive standard regarding the patentability of software from Parker v Flook to resurface.[19]

It is imperative that the situation in New Zealand be monitored.  Until the dust has settled and the repercussions of New Zealand’s decision are understood, it seems unlikely that any substantial change will come to the United States patent system, regardless of the method by which it is challenged.  This is simply due to a lack of solid information that a politician or court can hang its hat on, and be comfortable that they are making the correct choice.

 


[1] Pat Pilcher, New Software Patent Law Could Spark Tech Boom, New Zealand Herald, Sept. 2, 2013, http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=11118087.

[2] Joe Mullin, In Historic Vote, New Zealand Bans Software Patents, Arstechnica (Aug. 28, 2013, 3:50 PM), http://arstechnica.com/tech-policy/2013/08/in-historic-vote-new-zealand-bans-software-patents/

[3] Id.

[4] Id.

[5] Id.

[6] Pat Pilcher, Software Patent Stoush Could Have Huge Impact, New Zealand Herald, Feb. 5, 2013, http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=10863604.

[7] Id.

[8] Pat Pilcher, New Software Patent Law Could Spark Tech Boom, New Zealand Herald, Sept. 2, 2013, http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=11118087.

[9] Id.

[10] See Pat Pilcher, Software Patent Stoush Could Have Huge Impact, New Zealand Herald, Feb. 5, 2013, http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=10863604

[11] See Id.

[12] Id.

[13] Timothy B. Lee, New Zealand Just Abolished Software Patents. Here’s Why We Should, Too, Wash. Post., Aug. 29, 2013, http://www.washingtonpost.com/blogs/the-switch/wp/2013/08/29/new-zealand-just-abolished-software-patents-heres-why-we-should-too/.

[14] Id.

[15] Joe Mullin, In Historic Vote, New Zealand Bans Software Patents, Arstechnica (Aug. 28, 2013, 3:50 PM), http://arstechnica.com/tech-policy/2013/08/in-historic-vote-new-zealand-bans-software-patents/

[16] Id.

[17] Id.

[18]In re Alappat, 33 F.3d 1526, 1545 (Fed Cir 1994).

[19] Parker v. Flook, 437 U.S. 584 (1978); See also Timothy B. Lee, New Zealand Just Abolished Software Patents. Here’s Why We Should, Too, Wash. Post, Aug. 29, 2013, http://www.washingtonpost.com/blogs/the-switch/wp/2013/08/29/new-zealand-just-abolished-software-patents-heres-why-we-should-too/.

Reblog My New Ink! A New Conduit for Tracking Infringers

By Megan Conravey

Tattoos have been a part of human culture for thousands of years.[1]  Throughout history and in different cultures, tattoos have had many meanings, conveying status, love, religion, ideas, and even punishments.[2]  In many Ancient societies, tattooing was common among all members of a culture.[3]  However, as tattooing evolved, a subculture emerged that left tattooing available to only a certain type of person.[4]  In this tattoo culture, tattoo artists prided themselves on the original artwork they produced.[5]

Today, tattooing has broken into mainstream culture.[6]  It can be very lucrative to the tattoo artist.[7]  However, most of today’s clientele want tattoos of images portraying their favorite things: the Yankees logo, a Kurt Vonnegut quote, their favorite Beatles album, etc.[8] Most of the “favorite things” asked for today are held in copyright by someone other than the tattoo artist; who is going to produce a copy onto his client’s body and thereafter gain monetarily from the copy.

Under the Copyright Act, copyright protection becomes effective when “original works of authorship [are] fixed in a tangible medium of expression” and lasts for the life of the author plus 70 years.[9]  Further, selling the “tangible medium” does not in itself transfer any of the copyright interests to the purchaser.[10]  This protection gives exclusive rights in copying and derivative works to the original copyright owner.[11]  These tattoos, as copies or derivative works of the original copyrighted work, are infringements under the Copyright Act of 1976.

When tattoo artists create a new tattoo on a client, whether an original piece or a copy from another artist’s work, the Copyright Act must be considered.  In an original piece, the tattoo artist is arguably creating his own copyrightable work, since skin is a tangible medium upon which the work is being fixed and the originality required is minimal.[12]

When reproducing another artist’s work on skin—creating those Donald Duck tattoos—the Copyright Act must be considered as to whether or not the artist will be infringing by creating this work.  This consideration is also relevant to whether the tattoo being created is a copy or derivative work of another tattoo artist’s original creation.  The problem only arises if and when the copyright owner decides to enforce the copyright against these artists.  They can never enforce the copyright if they do not know about the infringement.  So how will the copyright owner ever find out about a random tattoo on a random person in a random city?

Another trait very unique to the Millennial Generation is its obsession with social media. Billions of social media users constantly share every aspect of his or her life on the Internet.[13] The seemingly smallest information can instantly travel all around the world thanks to modern connectivity.  Together with social media sites such as Facebook, Tumblr, and Twitter, the news of an infringed copyright can reach the copyright owner much easier than it might have in the past.

In fact, there are whole webpages dedicated to posting tattooed works.[14]  The trend of tagging posts and “reblogging” them in some way also helps to spread the information.  It also makes it more likely that the original copyright owner will see the work and chose to bring suit against the tattoo artist for infringing the copyright.  It has become very popular to post a picture of a tattoo with a description like “Look at my Star Wars sleeve!” while giving credit to the tattoo artist in hopes of bringing in clientele, but this may actually open up the possibility for legal action against the artist.[15]

Social media is currently being used to find evidence in numerous fields of law: criminal, family, constitutional, and even copyright.[16]  While private messages are afforded certain discovery protections, lawyers increasingly use public online posts as evidence in civil and criminal litigation.[17]

Individual social network participants should remember that although the Internet presents a tempting veil of anonymity, the same copyright laws attach for anything posted into the public Internet forum.[18]  Therefore, an online picture of a tattoo portraying the reproduction of a copyrighted work may lead to an infringement suit by the original copyright owner.  As with any posing on a social media site, discretion should be exercised.  Before sharing that new tattoo boasting the “awesome job Johnny at Tattoo World did on my Hermione portrait,” consider the legal repercussions that may arise.



[1] Cate Linberry, Smithsonian.com, Tattoos: The Ancient and  Mysterious History, http://www.smithsonianmag.com/history-archaeology/tattoo.html?c=y&page=1 (last visited Oct. 15, 2013).

[2] Id.

[3] Id.

[4] Timothy C. Davis, Creative Loafing, The Rise of Body Art, http://clclt.com/charlotte/the-rise-of-body-art/Content?oid=2351252 (last visited Oct. 15, 2013).

[5] Id.

[6] See BBC News Magazine, Why Do People Go Back for More and More Tattoos?, http://www.bbc.co.uk/news/magazine-24296713 (last visited Oct. 15, 2013).

[7] See Tat2Duck.com, How a Tattoo is Priced, http://www.tat2duck.com/index.php/tattoo-information/22-how-a-tattoo-is-priced (last visited Oct. 15, 2013).

[8] See Tumblr, The Word Made Flesh, http://www.tattoolit.com (last visited Oct. 15, 2013)

[9] 17 U.S.C. § 102(a).

[10] 17 U.S.C. § 202.

[11] 17 U.S.C. § 106

[12] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 358-60 (1991).

[13] See Examiner.com, Social Media Stats and Trends in 2013, http://www.examiner.com/article/social-media-networking-stats-and-trends-2013 (last visited Oct. 15, 201).

[14] See Tumblr, The Word Made Flesh; Soup, Tattoos By Anyone, http://tattoosbyanyone.soup.io/ (last visited Oct. 15, 2013).

[15] See Tumblr, The Word Made Flesh; Tumblr, FYeahTattoos!, http://www.fyeahtattoos.com (last visited Oct. 15, 2013).

[16] Kendall Kelly Hayden, The Proof is in The Posting, 73 Tex. B.J. 188, 189 (2010).

[17] Crispin v. Christian Audigier, Inc., 717 F. Supp. 2d 965, 981 (C.D. Cal. 2010).

[18] Sharon Nelson et al., The Legal Implications of Social Networking, 22 Regent U. L. Rev. 1, 29 (2010).

Facebook Cares About Your Privacy…But Not Really

By: Justin McHugh

Facebook has once again changed its privacy settings.  In the battle for privacy, Facebook users are slowly yet surely losing.  Facebook has recently announced that it will be removing a privacy feature that allowed users to limit who could search for them on the social network.[1]  Specifically, Facebook will be removing a privacy setting that limited whether users could be found when other people typed their names into Facebook’s search bar.[2]  In its defense, Facebook claims that only a very small percentage of users were using the limited search setting.[3]

Additionally, what many Facebook users fail to realize is that the option that lets users block who could search for them on the social network was removed for most of them back in December 2012.[4]  The privacy setting that allowed users to block “Who can look up your timeline by name” was only still in effect for the small percentage of users who actually used the setting.[5]  However, due to a 2011 privacy settlement, Facebook is required to obtain “affirmative express consent” before it can reveal a user’s private information.[6]  Thus, users who have been using the privacy setting to avoid their name from coming up in searches will have to confirm that they understand the change before it is removed from their privacy settings.[7]  Users who were hoping to block their names from being searched by potential employers or stalkers will now have to find another way to protect their privacy.

Facebook’s removal of the ability to block one’s name from showing up in the search bar is quite ill-timed considering that the social networking site has recently been under review for potentially violating a 2011 court order relating to privacy issues.[8]  The court order stated that Facebook must gain consent from users before changing their privacy settings.[9]  However, on August 29, 2013 Facebook “stripped language that explicitly allowed users to limit how their names and profile pictures could be used for marketing.”[10]  The new policy sparked outrage from Facebook users and privacy advocates who claimed that Facebook was violating the aforementioned court order requiring more transparency in Facebook’s privacy policies.[11]    Facebook countered by asserting that its new policy made clear that all users are required to grant Facebook “permission to use their personal information in advertising as a condition of using the service.”[12]

The outrage sparked by the new privacy policy change prompted the Federal Trade Commission to start an immediate inquiry into whether the 2011 court order had been violated.[13] The court order, which called for more transparency and protection, of privacy rights for Facebook users, stemmed from the fact that Facebook had been sharing users’ data with third party advertisers after they had explicitly promised not to.[14]  Facebook and privacy advocates alike argued that the language of Facebook’s new privacy policy gave the company unlimited access and permission to use Facebook users’ personal information in advertising.[15]

If privacy advocates’ assertions are proven correct, Facebook could potentially be put in violation of the 2011 court order.  As of the writing of this article, it remains to be seen if Facebook will be found to have violated the court order by the Federal Trade Commission.  However, the one thing that is certain is that Facebook is slowly encroaching on its users’ privacy rights and selling their personal information to third party advertisers.[16]  Furthermore, in its most recent encroachment of its users’ privacy rights, Facebook has removed the ability of users’ to block their names from being searched.[17]  This latest privacy right encroachment may seem minor, but in the grand scheme of Facebook’s business model to sell personal information, it is not.  It just goes to show that once you sign up for Facebook, they own your personal information and will sell it to the highest bidder without regard for your privacy preferences.


[1] Associated Press, Facebook axes privacy feature that let users hide profiles from search,  Macleans (Oct. 10, 2013), http://www2.macleans.ca/2013/10/10/facebook-axes-privacy-feature-that-let-users-hide-profiles-from-search

[2] Id.

[3] Id.

[4] Facebook privacy: Users should check these settings as new changes roll out,, The Washington Post  (Oct. 11, 2013), http://articles.washingtonpost.com/2013-10-11/business/42922974_1_facebook-privacy-privacy-tools-facebook-users.

[5] Id.

[6] Steven Musil, Facebook’s proposed privacy policy changes face FTC review, Cnet (Sept. 11, 2013, 5:23 PM), http://news.cnet.com/8301-1023_3-57602536-93/facebooks-proposed-privacy-policy-changes-face-ftc-review.

[7] Josh Constine, Facebook Removing Option To Be Unsearchable By Name, Highlighting Lack Of Universal Privacy Controls, TechCrunch (Oct. 10, 2013), http://techcrunch.com/2013/10/10/facebook-search-privacy/.)

[8] Elizabeth Dwoskin, Facebook Probed on Privacy Issues, The Wall Street Journal (Sept. 12, 2013, 9:53 AM),  http://online.wsj.com/news/articles/SB10001424127887324094704579069911830908636).

[9] Id.

[10] Id.

[11] Id.

[12] Vindu Goel & Edward Wyatt, Facebook Privacy Change Is Subject of F.T.C. Inquiry, The New York Times (Sept. 11, 2013), http://www.nytimes.com/2013/09/12/technology/personaltech/ftc-looking-into-facebook-privacy-policy.html.)

[13] Id.

[14] Id.

[15] Vindu Goel & Edward Wyatt, Facebook Privacy Change Is Subject of F.T.C. Inquiry, The New York Times (Sept. 11, 2013), http://www.nytimes.com/2013/09/12/technology/personaltech/ftc-looking-into-facebook-privacy-policy.html.)

[16] Elizabeth Dwoskin, Facebook Probed on Privacy Issues, The Wall Street Journal (Sept. 12, 2013, 9:53 AM),  http://online.wsj.com/news/articles/SB10001424127887324094704579069911830908636.

[17] Associated Press, Facebook axes privacy feature that let users hide profiles from search,  Yahoo News Canada (Oct. 11, 2013), http://ca.news.yahoo.com/facebook-axes-privacy-feature-let-users-hide-profiles-210016932–finance.html.

From “Here Ye, Here Ye” to #guilty

By Jarrid E. Blades

Once upon a time, the outcome of court proceedings were reported by a person swinging open the doors of the courthouse and announcing to the townspeople the verdict.  We have come a long way from this form of communication.  As long as we are connected to wireless or cell service, we can receive up-to-the-second updates during court proceedings.

Actually, it’s not too uncommon for the social media sphere to give updates before any other group, including big media outlets such as CNN.  For example, Seal Team 6’s raid on Osama Bin Laden’s compound was tweeted about live by a local Pakistani man. “Sohaib Athar tweeted under the handle @ReallyVirtual: “Helicopter hovering above Abbottabad at 1AM (is a rare event),” and “Go away helicopter – before I take out my giant swatter.”[1]  Mr. Athar went on to say, “one of the now multiple helicopters ‘was not Pakistani.’” He was the first to report the Bin Laden raid, beating out CNN, Fox or any other media outlet.

I believe social media has taken its toll on the judicial system.  More and more criminal cases are becoming social media spectacles (Jerry Sandusky, Casey Anthony, George Zimmerman). It’s almost impossible to avoid Twitter, Facebook, and other media live stream updates because they are everywhere.  CNN places live tweets from individuals in a ticker along the bottom of the television screen and people can tweet from sporting events, Times Square, or even when traveling by land or air. Their tweets are then posted live on video boards, digital billboards, and terminal screens worldwide. The ability to avoid the spread of information is almost impossible.

The negative impact of social media may one day stem from the misinterpretation and misreporting of fact via social media in relation to high stakes issues. PEW online posted an article titled, “On Twitter: Anger greets the Zimmerman verdict.” The article discusses some of the statistical information related to tweets after the verdict was handed down.  “According to a new Pew Research Center analysis of nearly 5 million tweets about the case in the first 26 hours after the verdict, 39% of the statements on Twitter shared news without any opinion. That demonstrates the degree to which the social media platform functions as a vehicle for disseminating breaking news by both citizens and news organizations.”

Five million tweets in 26 hours forces one to ask the question: Is there a court of social media?  An HLN article titled, “The Zimmerman trial in the court of social media,” pointed out that during the Zimmerman trial, the defense team live tweeted information and updates on court proceedings.  Supporters of Trayvon Martin and the prosecution also took to Twitter to keep followers updated about witnesses and court reactions. The Seminole Circuit Court may have acquitted Zimmerman, but in the court of social media the result was less then clear.

Logically, at this point in time in the height of social media usage we need to ask: Do laws which are put into place to govern courtroom and media procedure leave a place for Twitter?  The answer is trending . . . #no.  A Fall 2011 article from the Valparaiso University Law Review titled: The Courts Are All A ‘Twitter’: The Implications Of Social Media Use In The Courts, 46 Val. U.L. Rev. 43, describes the many ways jury members, judges, and attorneys can engage in ethical violations via Twitter. The author also points out that the growing trend at the state level is to include stricter and clearer jury instructions against electronic communications including social media usage, especially in state criminal proceedings, where the issue of social media usage has mainly found its niche. These cases are usually high profile and surrounded with public emotion. At the federal level, the Digital Law Media Project points out, “Rules of civil or criminal procedure—such as Rule 53 of the Federal Rules of Criminal Procedure — have been interpreted as prohibiting or limiting live-blogging and tweeting from certain proceedings.  Ultimately, the application of many of these rules rests in the judge’s discretion, and they may not be applied evenly within a jurisdiction.”[2]

 


[1] Parmy Olson, Man Inadvertently Live Tweets Osama Bin Laden Raid, FORBES, http://www.forbes.com/sites/parmyolson/2011/05/02/man-inadvertently-live-tweets-osama-bin-laden-raid/ (last updated May 2, 2011).

[2] Live-Blogging and Tweeting from Court, DIGITAL MEDIA LAW PROJECT, http://www.dmlp.org/legal-guide/live-blogging-and-tweeting-from-court (last updated Feb. 8, 2010).

Can Large Companies Own Human Genes? The Supreme Court Says No…Yes…Well Maybe…It Depends.

By Tyler P. Hite

This summer the Supreme Court handed down a unanimous 9-0 decision invalidating Myriad Genetics’ patent of the human genes BRCA1 and BRCA2 found in deoxyribonucleic acid (DNA), but validating Myriad’s genetic patents of synthetically created composite deoxyribonucleic acid (cDNA).[1]  The Court’s reasoning hinged upon the fact that human genes found in DNA are “naturally occurring” and thus not eligible for patent, even though isolating human genes from DNA severs naturally occurring chemical bonds, thus altering but not re-creating anything new.[2]  cDNA, which the Court deemed to be synthetically created from DNA by lab technicians, is created from naturally occurring DNA through a process which splits the DNA double helix and allows lab technicians to isolate specific genes for study, manipulation, and use.[3]  The Supreme Court’s decision allows for the patent of human genes that are deemed “not naturally occurring,” even though “the nucleotide sequence of cDNA is dictated by nature, not by the lab technician.”[4]

Myriad Genetics discovered the precise location and sequences of BRCA1 and BRCA2, two genes which if mutated, can drastically increase an individual’s risk of developing breast cancer (50-80% risk) and ovarian cancer (20-50% risk).[5]  Asserting their genetic discovery was patent eligible, Myriad invoked §101 of the Patent Act, which provides: “[w]hoever invents or discovers any new and useful . . . composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”[6]  By applying for and retaining patents of the BRCA1 and BRCA2 genes, Myriad was granted the exclusive right to isolate these genes within individual’s DNA, giving Myriad the sole right to test individuals for BRCA1 or BRCA2 mutations.[7]  On review, the Supreme Court was guided by language derived from Mayo Collaborative Services v. Prometheus Laboratories, Inc., which affirmed the Court’s interpretation of §101 of the Patent Act whereby the “laws of nature, natural phenomena, and abstract ideas are not patentable.”[8]  As such, Justice Thomas reasoned that extensive effort alone was insufficient to satisfy §101 of the Patent Act, as Myriad did not create or alter the genetic information encoded in the BRCA1 and BRCA2 genes.[9]

It would seem at first glance that Myriad Genetics’ effort to discover the BRCA1 and BRCA2 genes, while beneficial for society in its pursuit of genetic knowledge, was not necessarily a lucrative enterprise.  Myriad was able to charge $3,400 for each BRCA DNA test, but following the Myriad ruling, other companies lunged at the opportunity to offer similar tests, with a spokeswoman from Quest Diagnostics stating, “[b]ased on our initial review of the court’s decision, we expect it will open opportunities for Quest Diagnostics to develop new testing services, including in the area of hereditary breast cancer.”[10]  Considering Myriad Genetics recovered nearly $353 million, or 88% of their total revenue for the 2011 fiscal year directly from the BRCA gene testing, the ability of other companies to conduct similar BRCA testing will likely have a significant impact upon Myriad’s revenue in the foreseeable future.[11]  Following the Supreme Court’s ruling in Myriad, the question is whether companies will be deterred from investing in further genetic research if they are unable to patent their discoveries.

While it is far too early to resolutely determine how Myriad will alter the genetic research market, it is clear that Myriad Genetics is not implementing a wait-and-see method for that answer.  Just 3 months after the Supreme Court’s ruling, Myriad Genetics commenced an action in the U.S. District Court for the District of Utah, Central Division for injunctive relief based upon patent infringement regarding Myriad’s remaining 24 patents and 515 patent claims, all of which concern BRCA1 and BRCA2 genes.[12]  Even though Myriad Genetics is not challenging the Supreme Court’s decision from this summer, it seems the Supreme Court’s ruling is not as expansive and determinative as initially portrayed by various media outlet headlines.[13]  Myriad’s argument, outlined in their Motion for Preliminary Injunctive Relief and Memorandum in Support, argue that the defendant, Ambry Genetics Corporation, infringed upon Myriad’s patent rights by offering BRCA1 and BRCA2 testing even though “such testing requires use of methods and synthetic DNA over which Plaintiffs [Myriad Genetics] have exclusive patent rights.”[14]

The allegations filed circumvent the barrier established by the Supreme Court’s ruling in Myriad, since Myriad Genetics, if successful, will retain the process by which the BRCA1 and BRCA2 genes are isolated.  While the issue of patenting “naturally occurring” genes within DNA was resolved in Myriad, the Court’s narrow ruling provides no guidance as to whether the process by which certain genes are isolated is patent eligible. A recent Supreme Court decision, Bilski v. Kappos, may provide some guidance for Myriad’s claims.[15]  Bilski concerned the patent of “a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy.”[16]  The Court reasoned that that the machine-or-transformation test, which states “a claimed process is surely patent-eligible under §101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing,”(Id. at 3224) is not the exclusive test for determining a process’s patent eligibility, but is a “useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101.”[17]

Since it was an uncontested fact in Myriad that Myriad Genetics was the first to discover the BRCA1 and BRCA2 genes, it would seem to follow that the process by which they achieved their discovery, by isolating segments of DNA, is the type of process which “transforms a particular article into a different state or thing.”[18]  If this is the case, it would seem that Myriad is only a temporary impediment to a genetic researcher’s ability to control the fruits of their labor, as cutting-edge techniques and innovations for discovering and manipulating segments or stands of DNA could still be patent eligible.  Perhaps these companies cannot own the exclusive right to a particular gene, but current law seems to indicate that companies can sidestep this obstacle by simply patenting the process by which specific genes are isolated.  It follows that under §101 of the Patent Act, entities which develop a particular process for isolating various genes may secure the exclusive right to that process. Thus, companies would be rewarded for their expensive research and development of innovative processes.

Myriad Genetics’ pending litigation may provide an additional opportunity for the judiciary to reinforce a fundamental principle of patent law, which as reaffirmed in Myriad states that “[p]atent protection strikes a delicate balance between creating ‘incentives that lead to creation, invention, and discovery’ and ‘impeding the flow of information that might permit, indeed spur, invention.’”[19]  While the Supreme Court invalidated the patent of human genes, it did not completely diminish the lucrative aspect of developing cutting age genetic methods and procedures.  If anything, the Court might have reinvigorated a competitive spirit among biotechnological and pharmaceutical companies to develop the most precise and efficiency methods that lead to genetic discoveries.[20]

 


[1] Association for Molecular Pathology et al. v. Myriad Genetics, Inc., et al., 133 S.Ct. 2107, 2111 (2013).

[2] Id. at 2110.

[3] Id. at 2112.

[4] Id. at 2116; Myriad, 133 S.Ct. 2107 at 2119 (citing Brief for Petitioners 49).

[5] Id. at 2112; See also Susan G. Komen, Testing for BRCA1 & BRCA2 Mutations, http://ww5.komen.org/Content.aspx?id=5332&terms=Testing%20for%20BRCA1%20%26%20BRCA2%20Mutations (last visited Sep. 10, 2013); National Cancer Institute, BRCA1 and BRCA2: Cancer Risk and Genetic Testing, http://www.cancer.gov/cancertopics/factsheet/Risk/BRCA (last visited Sep. 10, 2013).

[6] 35 U.S.C. §101 (2012).

[7] Myriad, 133 S.Ct. 2107 at 2113.

[8] Mayo Collaborative Services v. Prometheus Laboratories, Inc.,132 S.Ct. 1289, 1293 (2011).

[9] Myriad, 133 S.Ct. 2107 at 2118.

[10] Reuters, U.S. Top Court Bars Patents on Human Genes Unless Synthetic, (Jun. 13, 2013), http://www.reuters.com/article/2013/06/13/us-usa-court-genes-idUSBRE95C0PW20130613 (last visited Sep. 10, 2013).

[11] N.Y. Times, Despite Gene Patent Victory, Myriad Genetics Faces Challenges, (Aug. 24, 2011), http://www.nytimes.com/2011/08/25/business/despite-gene-patent-victory-myriad-genetics-faces-challenges.html (last visited Sep. 10, 2013).

[12] Tech Dirt; Myriad Mocks Supreme Court’s Ruling on Gene Patents; Sues New Competitors Doing Breast Cancer Tests (Plaintiff’s Brief available in PDF format).

[13] See Reuters, U.S. Top Court Bars Patents on Human Genes Unless Synthetic, (Jun. 13, 2013), http://www.reuters.com/article/2013/06/13/us-usa-court-genes-idUSBRE95C0PW20130613 (last visited Sep. 10, 2013); Huffington Post, The Supreme Court’s Gene Patenting Decision Was Personal, (June 20, 2013), http://www.huffingtonpost.com/rep-debbie-wasserman-schultz/supreme-court-gene-patenting-decision_b_3474586.html (last visited Sep 10, 2013); CNN, Court: Human Genes Cannot Be Patented, (June 13, 2013), http://www.cnn.com/2013/06/13/politics/scotus-genes/index.html (last visited Sep. 10, 2013).

[14] Motion for Preliminary Injunctive Relief and Memorandum in Support, U.S. District Court for the District of Utah, Central Division, Case No. 2:13-cv-00640-RJS. http://www.patentlyo.com/myriadmotionforpreliminaryrelief.pdf (last visted Sep. 10, 2013).

[15] Bilski v. Kappos, 130 S.Ct. 3218 (2009).

[16] Id. at 3223.

[17] Id. at 3227.

[18] Myriad, 133 S.Ct. 2107 at 2117; Bilski, 130 S.Ct. 3218 at 3227.

[19] Myriad, 133 S.Ct. 2107 at 2116.

[20] See Reuters, U.S. Top Court Bars Patents on Human Genes Unless Synthetic.