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.

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