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From Bilski back to Benson: preemption, inventing around, and the case of genetic diagnostics.

Abstract

The long-anticipated decision in Bilski v. Kappos was supposed to end uncertainty regarding the patentability of process claims (or, at the least, business method claims). Instead, the opinion featured a series of anomalies: The Court emphasized strict construction of the Patent Act, but acknowledged three judge-made exceptions to patentability. It disapproved State Street, the Federal Circuit case that had upheld business method patents, but could muster only four votes for the proposition that business methods are in fact unpatentable. But even though the Court upheld business method patents, it invalidated all of Bilski's hedging claims. And while the Justices agreed on one thing - a patent that "preempts" something (a mathematical formula, an approach, a commonly used idea, a wide swath of technological developments, the public's access) is bad - they failed to operationalize the concept. That problem had plagued the law prior to State Street; in the interest of preventing the same set of problems from recurring, this Article uses recent empirical studies on gene patents to tease out indicia ("clues") to supplement the machine-or-transformation test for determining when a claim is preemptive and therefore invalid. Chief among these clues is the inability to invent around claims that cover broad prospects.

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  • Authors

    Dreyfuss R, Evans JP

    Institution

    New York University School of Law, USA.

    Source

    Stanford law review 63:6 2011 Jun pg 1349-76

    MeSH

    Commerce
    Diagnostic Tests, Routine
    Genetic Testing
    Humans
    Patents as Topic
    Supreme Court Decisions
    United States

    Pub Type(s)

    Journal Article

    Language

    eng

    PubMed ID

    21774194