Splicing Morality and Patent Law: Issues Arising from Mixing Mice and Men,

conception of the invention. To explain this important distinction, the Enlarged Board applied its approach to a hypothetical invention concerning an improved copying machine. 124 The Enlarged Board explained that article 53(a) would not necessarily preclude patentability merely because one embodiment contained unclaimed features that would enable counterfeiting money.1 In particular, it stated that there is "no reason to consider the copying machine as claimed to be excluded since its improved properties could be used for many acceptable purposes.' 126 While the clarification that claims should be the focus of analysis for applying article 53(a) is undoubtedly valuable, the brief discussion by the Enlarged Board on this issue is unlikely to resolve all future difficulties with applying article 53(a). For example, the opinion left several obvious open questions such as whether article 53(a) would bar patentability if an arguably immoral embodiment of an invention were actually disclosed in the patent application itself along with non-objectionable embodiments. 2 7 The focus on the 122. Id. Furthermore, the Enlarged Board stated that the potential of using a patent to restrict access to important breeding material was very limited. Id. at *3 1. 123. Id. at *30-31 (citation omitted). 124. Novartisf1, supra note 118, at *21-22. 125. Id. at *22. 126. Id. 127. See id. at 22 (addressing only the case where counterfeiting would be "apparent" to a [Vol. 2:247 272 HeinOnline -2 Wash. U. J.L. & Pol'y 272 2000 http://openscholarship.wustl.edu/law_journal_law_policy/vol2/iss1/9 Splicing Morality and Patent Law claimed invention would seem to suggest that so long as only the unobjectionable matter were claimed, the application would be deemed patentable under article 53(a). However, even a claims-based focus may require an exclusion of the objectionable use to avoid an article 53(a) issue. Additionally, a more difficult question not addressed in Novartis is whether article 53(a) would preclude patentability where an invention has solely objectionable or illegal uses in one or more of the EPC countries. Regardless of these unresolved issues, the Novartis approach is likely to be heartily applied by courts who heretofore had no real standard to apply. Although courts repeatedly emphasized that article 53(a) should be narrowly interpreted, they seemed to struggle with how to do so. However, the Novartis case now presents a framework with which the EPO and its courts are much more familiar-the claimed invention. Accordingly, it would not be surprising for the EPO to use the Novartis case to limit application of article 53(a). However, even though it may do so, there may still be some inconsistency, depending on how the claims are interpreted. As noted above, the Novartis case does leave some open issues. In addition, the EPO has previously struggled with attempting to narrowly apply exclusions from patentability even when it is utilizing a claims-based focus. 128 Moreover, a fundamental problem remains even after the Novartis case since the approach articulated in Novartis appears to gloss over the language in article 53(a) that requires that patents be skilled person and accordingly perhaps excluding situations where counterfeiting was actually not just apparent, but explicitly disclosed in the application). 128. For example, the EPO has struggled with application of the EPC bar to patenting methods of medical treatment, which are precluded as per se lacking industrial application under EPC article 52(4). Although the language of the exclusion is clear, the EPO has nonetheless allowed some patents in this area by narrowly interpreting the claims and interpreting what conditions constitute illness and therapy within this rule. See, e.g., T 329/94, Blood Extraction Method, 1998 O.J. EPO 241, reprinted in 29 INT'L REV. INDUS. PROP. & COPYWRIGT L. 694 (1998) (finding that blood extraction method was not precluded from patentability under article 52(4) because there was no therapeutic purpose or effect where the purpose was to improve the "efficiency of taking blood from a donor"); Trigonelline, T 143/9433.2, 1996 O.J. EPO 430, reprinted in 28 I.I.C. 95 (1997) (finding no prohibition from patentability under article 52(4) for a claim directed to the use of a composition in the production of a compound, even if the compound would have a therapeutic use); Contraceptive Method/British Technology Group, T 74/93-3.3.1, 1995 O.J. EPO 712, reprinted in 27 I.I.C. 99 (1996) (finding patent on a method of contraception not excluded under article 52(4) because pregnancy is not an illness, and its prevention is not therapy). 20001 HeinOnline -2 Wash. U. J.L. & Pol'y 273 2000 Washington University Open Scholarship Re-Engineering Patent Law barred for the commercial exploitation of an invention that violates ordre public or morality. Because the claimed invention may not be equivalent to commercial exploitation, it could be argued that the Novartis approach is inadequate, albeit tempting to apply. III. FUTURE FRAMEWORKS FOR CONSIDERING MORALITY