by Dennis Crouch
This post offers some insight into four patent-focused academic articles that I’ve been reading lately.
1. A textualist approach to patent eligibility under § 101;
2. Reflections on the Myriad, ten years later
3. Message to Competition Regulators: Patents are not simply a necessary evil
4. Philosophical critique of AI inventorship
These pieces offer insights into ongoing debates within patent law and policy. Although I don’t necessarily agree with the conclusions made by the various authors, each article provides fodder for continued discussion on these important topics.
Patent Textualism: A New Approach to Eligibility? A thought-provoking new article by SMU Professor David Taylor argues that the Supreme Court should apply textualism to interpret the patent eligibility statute, 35 U.S.C. § 101. Taylor contends this would lead to broader patent eligibility, return power to Congress to set eligibility policy, and provide greater clarity and predictability. David O. Taylor, Patent Textualism, __ George Mason L. Rev. __ (forthcoming 2024).
The article examines how the Supreme Court has increasingly applied textualism both generally in American law and more specifically in patent cases over the past decade. Taylor finds that in many areas, such as remedies and procedural issues under the America Invents Act, the Court has embraced textualist readings of the patent statutes. For example, in Octane Fitness v. ICON Health & Fitness, the Court relied heavily on the “ordinary meaning” of the term “exceptional” in § 285 to reject the Federal Circuit’s rigid test for attorney fee awards. 572 U.S. 545 (2014). Similarly, in Halo Electronics v. Pulse Electronics, the Court emphasized the plain meaning of “may” in § 284 to reject the Federal Circuit’s test for enhanced damages. 579 U.S. 93 (2016).
Despite the move toward textualism in most areas of American law, Taylor identifies patent eligibility under § 101 as a glaring exception where the Court has eschewed textualism in favor of expressly atextual, policy-based interpretations. Taylor contends that Justice Breyer’s opinion in Mayo, which forms the foundation of the current eligibility doctrine, explicitly disregards the statutory text in favor of policy considerations. Obviously a textualist reading of § 101 would result in much broader eligibility – a policy goal that Taylor favors. As a legal process matter, Taylor notes that the atextual – almost constitutional – approach strips congressional power. Textualism would force the Court to defer to Congress’s chosen statutory language. Of course, it makes me wonder how the textualists would handle overturning longtime precedents excluding abstract ideas, laws of nature, and natural phenomena?
Myriad at 10: I enjoyed reading the new article titled The Myriad Decision at 10, authored by Professors Jacob Sherkow, Robert Cook-Deegan & Henry Greely. 25 Annu. Rev. Genom. Hum. Genet. 397-419 (2024).
It has now been a decade since the Supreme Court’s landmark decision in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), which held that isolated genomic DNA sequences are not patent-eligible subject matter under 35 U.S.C. § 101 — but that the associated cDNA is patent eligible. The Sherkow article traces the history of gene patents and the Myriad litigation and reflect on some broader lessons for patent law and the biotechnology industry. Some key takeaways from the article:
1. Myriad‘s impact on patent law has been fairly limited. While it foreclosed patents on isolated genomic DNA, the decision left open the patentability of cDNA and other modified genetic materials. Other cases, including Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), have had a much greater effect in restricting patent eligibility across technologies.
2. The biotechnology industry has adapted and continued to thrive post-Myriad. Fears that invalidating gene patents would devastate biotech R&D have not materialized. The authors argue that changes in sequencing technology and business models have been more impactful than the legal shift.
3. Myriad was a cultural and political phenomenon that captured public attention, but its practical effects have been more nuanced. It allowed more laboratories to offer BRCA testing, but did not radically reshape genetic diagnostics as some hoped or feared.
4. Internationally, Myriad’s impact has varied. A similar case in Australia (D’Arcy v Myriad Genetics Inc [2015] HCA 35) reached a comparable result, but other jurisdictions like Europe have maintained different approaches to gene patent eligibility.
An Unconventional View of IP and Antitrust: USC Professor Jonathan Barnett’s new article argues that patent rights should not be seen simply as exclusionary instruments designed to incentivize innovation by blocking imitation. Rather, it is important to for courts and antitrust regulators also recognize that patent rights play an important “enabling function” in facilitating transactions between innovators and holders of complementary assets needed for commercialization. Jonathan M. Barnett, An Unconventional View of Intellectual Property and Antitrust Policy, Competition Pol’y Int’l TechREG Chronicle (forthcoming Sept. 2024). His basic notion is that patent rights can actually lower entry costs and expand access in many cases by reducing certain risks and enabling deals between innovators and entities with capital, production, and distribution capabilities. Although he does not delve into it deeply, I might distinguish here between patent rights and trade secrecy rights. Barnett’s core argument about IP rights enabling transactions and lowering entry barriers is most directly applicable to patents. Trade secrets, by their nature, do not facilitate the same kind of open licensing and knowledge transfer that Barnett highlights as beneficial in the patent context.
Barnett’s framing is important because the conventional wisdom seen in Supreme Court jurisprudence is that patents should be ‘tolerated’ as a necessary evil needed to promote innovation. This approach led to cases like Mayo, Alice, and eBay that have weakened patent rights. But under Barnett’s approach, robust IP protection often promotes both innovation and competition by facilitating transactions and lowering entry barriers.
I also want to note that Barnett’s article is primarily a conceptual “think piece” that offers a theoretical framework for understanding the relationship between intellectual property rights, innovation, and competition. While it does reference some historical events and industry examples, it does not present new empirical research to support the conclusions.
The Impossibility of Artificial Inventors: A Doctrinal and Philosophical Critique: A new article by Matt Blaszczyk takes a philosophical bent in arguing that the precedent barring the patenting of AI created invention aligns with both doctrine and theory. Impossibility of Artificial Inventors, 16 Hastings Sci. & Tech. L.J. (forthcoming). The basic idea here is that the concept of inventorship is inextricably tied to human cognitive processes and the “patent bargain” between inventors and society. The article posits that removing the human element would undermine the theoretical foundations and public policy goals of the patent system. That that means is that proposals for AI inventorship are not merely advocating for an incremental doctrinal change, but rather a radical reimagining of core tenets of patent law. Blaszczyk warns that severing the link between human inventors and patent rights risks delegitimizing the patent system in the public eye — making patent law “nothing more than a business monopoly” in the eyes of the public.