Welcome to Inherently Sarnoff
Joshua Sarnoff
June 5, 2009
This is my first post, so I'll say a little about what I have been doing for the
last few years (outside of the home and my teaching of patent law and IP
Clinic).
Following some earlier work that I
had done in the IP Clinic for the Public
Interest Intellectual Property Advisors on the consistency of disclosure of
origin requirements with international IP treaties, I was asked by the United
Nations Conference on Trade and Development (UNCTAD) in 2005 to draft a report
with Carlos
Correa for the Eight Conference of the Parties to the Convention on Biological Diversity on the
relationship between the intellectual property sytem (particularly patents) and
the access and benefit sharing requirements of the CBD. The report discusses the
nature and scope of a potential disclosure of origin requirement for genetic or
biological resources and associated traditional knowledge, how it could be
implemented by national governments and the international IP system, and what
issues would need to be resolved in reaching international agreement on such a
system.
Around the same time, I was involved in patent law reform issues,
including submitting comments for a coalition of law professors on draft patent
reform legislation. In 2007, I focused the law of obviousness (inventive step)
by filing an amicus
brief in the KSR v.
Teleflex case in the U.S. Supreme Court and writing an article about the case and
presumptions of validity, comparing U.S. and Indian law.
I have also been
focused on the history of what can be patented, particularly in the United
States (although tracing back to the English patent custom and looking
comparatively to Europe and elsewhere). When the U.S. Supreme Court granted
certiorari in the LabCorp. v.
Metabolite case, I filed an
amicus brief for AARP in December of 2005 that argued for the
unpatentability of a medical diagnostic claim to a newly identified correlation,
based on the exclusions from patentability for science, nature, and ideas, and
why scientific discoveries of natural phenomena (there a medical correlation)
should not be patented. This made me wonder about the history of this doctrine,
which I thought at the time must have been related to the idea of nature as a
common heritage resource (tracing that idea to Grotius).
I was then asked
by George Washington University Law School/Oracle Corp. to write a paper on
patentable subject matter that I presented at the “What’s Ahead on Highway 101?”
symposium held at GWU on November 3, 2006. I subsequently developed a much
longer draft of the history, Shaking
the Foundations of Patentable Subject Matter. and when the U.S. Court of
Appeals for the Federal Circuit granted en banc review of In re Bilski, I
filed an amicus
brief explaining the constitutional concerns with construing Section 101 of
the Patent Act broadly (or finding an implied ratification of the broad State
Street Bank approach under Section 273) so as to find the busines method claim
at issue to be patentable.
More recently, with Lori Andrews and Jonathan Kahn, I filed comments
with the Australian Senate in their inquiry on gene patents, explaining why the
law in the US has not authorized patents on isolated and purified gene sequences
and why the thousands of patents that have issued for such sequences are
invalid. We also submitted comments
with the US Department of Health and Human Services on a public
consultation draft report of the Secretary's Advisory
Committee on Genetics, Health and Society on gene patents and licensing and
their effects on patient access to genetic tests. I recently appeared on the Kojo Nnamde radio show
to discuss the ACLU's and Public Patent Foundation's judicial
challenge to the breast cancer gene patents issued by the U.S. PTO and
licensed to Myriad Genetics.
I am now working on a Supreme Court amicus
brief in Bilski v. Doll, and a book entitled Patents and Morality: Religion, Science, Nature and
the Law, discussing the history of and modern moral concerns with
patenting science and nature. I am also involved in discussions of patents,
technology transfer, climate change, and human rights. So, more to come on
patentable subject matter, and on other patent law and environment issues.
