The brief is a good preview for my forthcoming Supreme Court amicus brief in Bilski v. Doll, as it demonstrates in the contexts of products of nature and natural phenomena the relevant patentable subject matter requirement that there must be invention in the application of scientific principles, naturally occuring materials, and abstract ideas. Historic ethical obligations required treating previously known or newly discovered science, nature, and ideas as not only "free for all to use" but also as if they were already in the prior art (once disclosed, e.g., in a patent application). Thus, in order for there to be any patent-eligible "invention" there must necessarily be some other "inventive concept" (using the terminology of Parker v. Flook) in the application itself of the discovered science, nature, and ideas, even if the application is novel. Simply isolating the natural genetic material is not sufficient to be called "invention," given that the discovery of the natural material must be treated as if it were already known. Similarly, claiming the isolated genetic sequence information or variants of it (in mutations) is not an invention once that information is requiredto be treated as public domain information (as natural phenomena). And claiming the acts of comparing the actual genetic sequence disclosed in the patent to another (potentially mutated) sequence is not an invention, given that there is no creativity in doing so once the sequence information is treated as in the public domain -- recognizing that one of these things is not like the others is trivial even if highly useful. (It also destroys the quid pro quo of the patent system -- an enabling disclosure where people can use the information -- if not the physical implementation -- in exchange for patent rights. Note that this is different from but the mirror image of the bargain-destroying problem caused by the lack of a meaningful research exception, when people can't use the information disclosed in the patent to sequentially innovate because they can't use physical embodiments that are necessary to research. Although combinatorial chemistry and biology may minimize that problem, some of the patents at issue in the AMP v. PTO case actually prohibit "analyzing" sequence information, however it might be obtained.)
Chris Holman (a friend and a colleague on a recent paper entitled Recent Developments Affecting the Enforcement, Procurement, and Licensing of Research Tool Patents, the draft of which is on SSRN and the final is published at 23
This case also reflects another "industry battle," this time not IT or generics against pioneering PhRMA, but the medical treatment/scientific research community (and the patient and consumer community as the ultimate beneficiaries) against the biotech/scientific research community. And it is precisely the tension in the scientific community (which spans both industries) that makes this so fascinating. As the amicus brief discusses, scientists had an ethical duty (deriving from the morality of religion) not to subject to private property rights their discoveries of nature -- which duty remains reflected in the patent law requirement that such discoveries must be treated as prior art if disclosed. As William Robinson stated over a century ago in his celebrated Patent Law treatise, "To benefit by the discoveries of his fellow-men is thus not only a natural right, it is also the natural duty which every man owes to himself and to society; and the mutual universal progress thence resulting is the fulfillment of the earthly destiny of the human race.” As Lord Camden said a century earlier, scientists are "entrusted by Providence with the delegated power of imparting to their fellow creatures that instruction which heaven meant for universal benefit; they must not be niggards to the world, or hoard up for themselves the common stock." Are scientists who seek to (and often successfully) patent their natural discoveries bad people?