Shubha Ghosh: Demarcating Nature Myriad
Channel: IPBio
Date: 2014-11-21

Shubha Ghosh (University of Wisconsin): Demarcating Nature After Myriad

The United States Supreme Court in its Myriad decision affirmed the existence of a borderline between unpatentable natural phenomena and potentially patentable inventions. However, the Court cribbed a few pages from standard biotechnology to lay out the contours of this boundary without appeal to patent law or policy. As a result, courts have read the exclusion from patenting quite broadly in subsequent cases, such as in Ariosa involving fetal DNA and in the recent Roslin Institute decision involving clones. While some may welcome this broad limitation on patenting life forms, the lack of a clear policy is worrisome for two reasons. The first has to do with arguments that US courts have undermined their credibility by assuming broad discretion, at the expense of expert agencies, in reviewing questions of science and patent law. Labels like anti-patent subvert any claim to principle. This first problem reverberates with a second class of problems: collateral limitations on patenting in the area of infringement and in competition policy. In the same term that the Court limited patents on naturally occurring DNA, it also held in Bowman v. Monsanto that planting a patented seed constitutes patent infringement. This decision ignored the natural processes of reproduction and regeneration and subsumed them under the patent claims. Furthermore, the Court has moved towards finding competition limitations on the scope of patents in its Actavis decision, published a few weeks before its Myriad decision. While the Court attempted to articulate the policies of competition law that limit patents in the Acatavis case, the Court has not recognized the competition issues that arise in the biological sciences when the nature meets the marketplace. This paper revisits the Myriad decision and seeks to do what the Court failed to do, namely articulate the policy basis for separating natural phenomena from patentable subject matter and identify how these policy limitations apply to issues of infringement and competition policy.

Recording made at: Intellectual Property and the Biosciences: Past Trends and Future Directions Griffith University, South Bank, Brisbane 7 & 8 July 2014

The relationship between intellectual property and the biosciences is an integral part of the so-called biotech revolution, a movement which has positioned the biotechnological-fix as an answer to some of the most pressing concerns facing the planet in the 21st Century. In assessing whether new crops and medicines will stave off threats from environmental and biodiversity degradation as promised - and how these innovations will promote or impinge on human equality - intellectual property, its relationship with the biosciences and its role in this future market will be a defining part of that inquiry.

The workshop will focus on intellectual property and the biosciences from a range of disciplinary perspectives and working contexts, including law, history, philosophy, sociology, science, policy and industry. The relationship between intellectual property and the biosciences is a vast and complex area of research to which many different analytic approaches are necessary. Recent events, particularly the US and Australian Supreme Courts' Myriad decisions on gene patenting, have changed the state of play dramatically; indicating this is also a rapidly moving field of inquiry.