Review by Dennis Crouch
Professor Eisenberg (Michigan) is one of the leading academics focusing on proprietary rights in biomedical research. She has been writing about biotech patents and other forms of protection since the 1980's. Most recently, Professor Eisenberg provided final version of her forthcoming article titled "Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski." The article will soon be published in the Case Western Reserve Journal of Law, Technology & the Internet, but I wanted to highlight the article today because it speaks directly to the pending case of Mayo v. Prometheus. Oral arguments are scheduled in Prometheus for Wednesday, December 7, 2011.
Prior to its 2010 decision in Bilski v. Kappos, the Supreme Court's leading precedent on patentable subject matter was the quartet of cases issued before the formation of the Court of Appeals for the Federal Circuit. See, Benson, Flook, Diehr, and Chakrabarty. In deciding the patentable subject matter question raised in Bilski, the Supreme Court simply pointed back to its old precedent as controlling. Eisenberg writes: "The Supreme Court reaffirmed the authority of these decisions without explanation in Bilski v. Kappos, thereby demanding formal adherence to stare decisis without following the discipline of common law reasoning."
In her article, Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to "not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about." She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that "patentable subject matter doctrine does not and cannot serve that role in its current form." (2) PSM could be useful in "limiting heterogeneity" of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which "less protection is optimal." (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.
- Read the article: /media/docs/2012/03/eisenberg.wisdomordeadhand.patentlyo.pdf.
- Cite: Rebecca Eisenberg, Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski, 3 CASE W. RES. J.L. TECH. & INTERNET 1 (2012)