The Committee continues to be deeply involved in the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources (ICIPGR), Traditional Knowledge and Folklore. The ICIPGR is undertaking negotiations with the objective of reaching agreement on a text of an international legal instrument, which will alter the TRIPS agreement with regard to intellectual property protection that involves “traditional knowledge” and “genetic resources.” The Biotechnology’s Committee has sent representatives in the past to observe negotiations and issue recommendations. The ICIPGR will in session on June 25-29. Our committee’s efforts will continue throughout these negotiations.
What Are Genetic Resources and Traditional Knowledge?
"Traditional knowledge" has been defined by some as "knowledge, know how, skills, innovations or practices; that are passed between generations in a traditional context; and that form part of the traditional lifestyle of indigenous and local communities who act as their guardian or custodian." "Genetic resources" have been defined as "genetic material of actual or potential value."
Why Amend the TRIPS Agreement?
Many national governments and groups of indigenous peoples have concerns about the inadequacy of extant IP systems to protect TK/GR. These concerns are numerous and varied, but most seem to stem from the possibility that TK/GR might be shared by the custodial communities with others who could benefit from it, without acknowledgement or compensation paid to the custodial community.
What is the Biotech Committee Doing?
Representatives of the Committee attend WIPO meetings aimed at agreeing on amendments to the TRIPS agreement, submitting comments, and gathering opinions and observations of IP professionals throughout the world. It goes without saying that the Committee will report all developments to the membership, through the Buzz and other means.
As your new Vice Chair I urge and invite you to attend the first AIPLA meeting of the year at the Midwinter Institute.
Please see my article in the September Buzz, on the Federal Circuit's first post-TC Heartland venue ruling in In Re: Cray Inc. The Federal Circuit articulated three requirements which must be met to establish that a defendant has a "regular and established place of business" for purposes of establishing venue under the patent venue statute, 28 U.S.C. section 1400(b).
Last year, I blogged about the second Question Presented in Life Technologies Corporation v. Promega Corporation: “Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.”?
At the time I had queried whether the Court would interpret the phrase “substantial portion” of the components as a numerical term (e.g., can a single component be a “substantial portion” of a 5 component combination); or whether the Court would take into account qualitative considerations, such as “how important or central” the component is to the invention,” as the Federal Circuit did in its decision.
On February 22, 2017, the Supreme Court opted for the quantitative approach, holding that the text of the statute supported interpreting a “substantial portion” of the components of a patented invention as “a quantitative measurement.” The Court also noted that a qualitative standard would not help resolve close cases, and that it might prove too complicated for potential infringers or the jury to assess the qualitative importance of the components of an invention.
Next, the Court considered the interaction between § 271(f)(1) and § 271(f)(2) in reaching its ruling that a single component can never constitute a “substantial portion” of the components of a multicomponent, patented invention, for purposes of triggering liability under § 271(f)(1). The Court reasoned that reading § 271(f)(1) to refer to more than one component, allowed that provisions to work in tandem with § 271(f)(2), which addresses infringement based on “any” singular component that is especially made or especially adapted for use in the patented invention. Accordingly, the Court held that “one component does not constitute ‘all or a substantial portion’ of a multicomponent invention under § 271(f)(1).”
In other words, the meaning of Life v. Promega is “>1”.
Although this ruling followed from the text of the statute, it did bring to mind Douglas Adam’s Scifi classic Hitchhiker’s Guide to the Galaxy , where a supercomputer, Deep Thought, determine “the Answer to the Ultimate Question of Life, The Universe, and Everything,” comes up another quantitative Answer: 42.
The Court specifically declined to reach the question of “how close to ‘all’ of the components ‘a substantial portion’ must be, leaving open the question of what fraction of components would qualify as a quantitatively “substantial” portion of the components of a patented invention. E.g., are 3 of 5 components a “substantial” portion? Can 1 of 2 components ever be a “substantial” portion of the components.
A claim construction ruling by the District Court for the District of New Jersey in Horizon Pharma Ireland Ltd. v. Actavis Labs., UT, Inc., held, as an issue of first impression, that a claim reciting the transitional phrase “consisting essentially of” was indefinite under Nautilus, where the patent specification did not describe the “basic and novel properties” of the formulation with reasonable certainty. 2016 U.S. Dist. LEXIS 109068 (D.N.J. Aug. 17, 2016).
In practice, claims that recite “consisting essentially of” are often introduced during prosecution as a fallback position for originally filed claims that recite the broader transitional phrase “comprising.” This decision underscores the potential need for practitioners to consider whether to include a description of basic and novel properties of the invention in an application as a fallback position, and to consider whether the specification includes such a description before amending claims to recite “consisting essentially of.”
In Nautilus, the Supreme Court held that for a claim term to be definite under 35 U.S.C. § 112, ¶ 2, "a patent's claims, viewed in the light of the specification and prosecution history, [must] inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014).
The Horizon Pharma ruling
As discussed by the Horizon Pharma court, "consisting essentially of" is a transitional phrase with a well-established legal meaning in Federal Circuit case law, which stakes out “a middle ground between the open-ended ‘comprising’ that does not exclude any unrecited claim elements and the closed ‘consisting of’ that excludes any elements not explicitly recited in the claim.” "By using the term `consisting essentially of,' the drafter signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention." PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
In an issue of first impression, the Horizon Pharma court considered whether the specification’s description of the “basic and novel properties” of the invention must meet the Supreme Court’s standard in Nautilus. The district court determined that “[b]ecause the basic and novel properties of an invention are part of the construction of a claim containing the phrase ‘consisting essentially of,’ the Nautilus standard applies to the assessment of an invention's basic and novel properties.
To arrive at its ruling the court looked first at whether the specification of the patent identified the basic and novel properties of the invention. Ultimately, the court accepted Horizon’s argument that the specification does not need to explicitly label properties of the invention as basic and novel. The court held that the specification’s reference to five properties as “Characteristics of the Gel Formulation" and identification of those characteristics as features demonstrating improvement over the prior art was sufficient to identify these as the “basic and novel properties of the claimed invention.”
However the court then determined that one of the five basic and novel properties of the claimed formulation –“better drying time” -- was not described with reasonable certainty. The court noted that although the patent identified a method for determining relative drying time, none of the working examples used that method. Moreover, the drying time data presented in the patent was obtained using two other methods for measuring drying time that gave inconsistent results for whether the gel formulation had a better drying time than a liquid formulation, and did not measure the drying for the same length of time. Therefore, the court concluded that a POSA would not know under what standard to evaluate the drying rate of the claimed invention. Accordingly, the court ruled that the "better drying rate" basic and novel property was indefinite and consequently, the term "consisting essentially of" must be construed as indefinite.
What does indefiniteness under Nautilus mean for claims reciting “consisting essentially of”?—Takeways
· Although some schools of patent drafting avoid specifically identifying features of the invention as key or distinct over art known at the time of drafting, practitioners may want to consider identifying one or more features of the invention as basic or novel, in order to support claims reciting a “consisting essentially of” transitional phrase. This is true even if the originally drafted claims do not recite the phrase, since the term may be introduced during prosecution as a fallback position.
· If a basic feature of the invention is a measured parameter, practitioners may want to make sure that the patent specification describes the protocol and equipment used to take the measurement, especially where different methods may yield different results.
By Vicki Norton and Guest Commentator Jennifer Kearns
In view of the recent enactment of the federal trade secret law, and recent court decisions impacting patent eligibility and the scope of discovery under the BPCIA, biotech companies are re-weighing the benefits of trade secret protection against the risk of a competitor filing first for patent protection. In the attached article, we provide some practice tips for companies seeking to maximize trade secret protection for key technological developments maintained as trade secrets. More
The Supreme Court has granted certiorari in Life Technologies Corporation
v. Promega Corporation (Life v.
Promega), to answer the question of what constitutes “a substantial portion
of components” of a patented combination under 35 U.S.C. § 271(f)(1)—a case that
will impact the potential risk of patent infringement liability for US
exporters supplying a single staple component into global commerce.
My January Buzz article on Life v. Promega discussed Life’s petition
to the Supreme Court to grant certiorari
on two issues relating to infringement liability under 35 U.S.C. § 271(f), and
the Supreme Court’s request for briefing from the Solicitor General on the two
proposed issues presented:
Whether the Federal Circuit erred in
holding that a single entity can “actively induce” itself to infringe a patent
under 35 U.S.C. § 271(f)(1).
Whether the Federal Circuit erred in
holding that supplying a single, commodity component of a multi-component invention
from the United States is an infringing act under 35 U.S.C. § 271(f)(1),
exposing the manufacturer to liability for all worldwide sales.
the recommendation of the Solicitor, the Court granted Life’s petition for certiorari on the second question posed
in Life’s petition, which asks whether the statutory requirement for supplying
“a substantial portion of the components of a patented invention” can be met by
supplying only a single component of a patented combination.
271(f)(1) imposes infringement liability for supplying in or from the United
States “all or a substantial portion of
the components of a patented invention,” in such manner as to “actively induce
the combination of such components outside of the United States.” After a jury found Life liable for willful
infringement of five patents, including a kit claim in U.S. Patent No. RE
37,984, the district court granted JMOL of non-infringement. The Federal Circuit reversed, holding that
the ‘984 patent was infringed under § 271(f)(1), even though Life shipped only
one of five components of the patented kit to its own manufacturing facility in
the UK, where all five components were combined, and Promega appeared to concede
that the product shipped was a commodity.
way of further background, Claim 42 of the ‘984 patent recites a kit “for
analyzing polymorphism in at least one” DNA locus, the kit comprising 5
components, including primers, a PCR polymerizing enzyme, dNTPs, a buffer and
template DNA comprising a simple or cyptically simple nucleotide sequence:
a) at least
one vessel containing a mixture of primers constituting between 1 and 50 of
said primer pairs;
b) a vessel
containing a polymerizing enzyme suitable for performing a primer-directed
polymerase chain reaction;
c) a vessel
containing the deoxynucleotide triphosphates adenosine, guanine, cytosine and
d) a vessel
containing a buffer solution for performing a polymerase chain reaction;
e) a vessel
containing a template DNA comprising
i) a simple or
cryptically simple nucleotide sequence having a repeat motif length of 3 to 10
nucleotides and ii) nucleotide sequences flanking said simple or cryptically
simple nucleotide sequence that are effective for annealing at least one pair
of said primers, for assaying positive performance of the method.
to the Federal Circuit opinion, Life shipped Taq polymerase (component “b”) of a kit to its UK facility, while
the remaining components were manufactured and combined with the Taq polymerase in the UK. In addition, the opinion noted that Promega
did not assert infringement under 271(f)(2) because “Taq polymerase is ‘a staple article or commodity of commerce
suitable for substantial noninfringing use.’”
petition for certiorari reiterated
two arguments previously rejected by the Federal Circuit; namely, (1) reference
in § 271(f)(1) to “components” in plural form requires an infringer to supply
more than a single component of a patented combination; and (2) a comparison of
the provisions of § 271(f)(1) with § 271(f)(2) indicates that § 271(f)(1)
governs when an accused infringer supplies multiple components of a patented
combination, whereas, § 271(f)(2) governs liability for supplying a single
component (it imposes liability for supplying “any component of a patented
invention that is especially made or especially adapted for use in the
invention.”) The petition further argued
that because § 271(f)(1) excludes liability if the single component is “a
staple article or commodity,” Life’s offshore supply of Taq polymerase--a single, commodity product—could not be the basis
for liability under § 271(f)(1).
The Solicitor urged the Court to
find that the Federal Circuit erred in holding that supplying a single
component of a multi-component invention can give rise to liability under §
271(f)(1), asserting that the Federal Circuit incorrectly ruled that the term “substantial”
in section 271(f)(1) means “’important’ or ‘essential’” and improperly concluded
that “[n]othing in the ordinary meaning of ‘portion’ suggests that it
necessarily requires a certain quantity.”
Solicitor’s Br. At 15-16.
More specifically, the Solicitor noted
that § 271(f)(1) recites that liability can only be imposed for supplying “all
or a substantial portion of the components of a patented invention, where such
components are uncombined in whole or in part,” and that in this context, the
term “substantial” should be interpreted to have a quantitative, rather than a
qualititative meaning. The Solicitor
urged that the terms “all” and “portion” invoke quantitative meanings, which support
interpreting the term “substantial” to also have its quantitative meaning “of
ample or considerable amount” rather than its qualititative meaning. In addition, the Solicitor noted that the
reference in § 271(f)(1) to “such components” to describe what is exported from
the U.S. “implies that multiple components must be supplied from the United
States in order to trigger the statutory ban”
Id. at 16-17. Furthermore, the Solicitor observed that §
271(f)(2) specifies the circumstances in which export of a single component can
give rise to liability, and that the Supreme Court stated in dicta in Microsoft, that Sections 271(f)(1) and section
271(f)(2) “differ, among other things, on the quantity of components that must
be ‘supplie[d] . . . from the Untied States’ for liability to attach.” Solicitor’s Br. at 17 (quoting Microsoft Corp. v. AT &T Corp., 550
U.S. 437, 454 n.16 (2007)). The Solicitor
concluded that because § 271(f)(2) only imposes liability for export of a
single article where the article is “especially made or especially adapted for
use in the invention and not a staple article or commodity of commere suitable
for substantial non-infringing use,” § 271(f)(1) cannot impose liability for
export of a single commodity article. Id.
will be interesting to monitor whether the Court arrives at the same result as
the Solicitor (as it often does in patent cases). The position suggested by the Solicitor raises
the following question, however:
can a patent claim covering a two-component product can ever be infringed underthe
Solicitor’s test? That is, can 50% of a
two-component product qualify as a “high percentage” of “all . . . of the
a two component product claim cannot be infringed under the Solicitor’s test
for § 271(f)(1) should the Court instead adopt a blended test in which both
quantitative and qualitative factors are considered?
the Solicitor’s proposed test the sort of “bright-line” test that the Supreme
Court rejected for other tests in patent law, such as obviousness, patent
eligibility, and enhanced damages and attorneys’ fees?
if the Solicitor’s “by-the-numbers” approach is too rigid, will the Court rule instead
that it is appropriate to take into account considerations of “how important or central” the
component is to the invention” as the Federal Circuit did in its decision?
approach appears to be consistent with the rationale of the dissenting Justices
in the Deepsouth Packing Co., Inc. v.
who indicated that manufacture abroad of even “only one vital part” of a
patented combination might have altered their view that infringement liability
should have been imposed under the facts of that case.
qualitative considerations are weighed should patent considerations factor into
the analysis as well as technical considerations? The Federal Circuit relied in part on
technical considerations in determining that the Taq polymerase supplied by Life was a “substantial portion” of the
kit, stating essentially that but for Taq
polymerase, “the genetic testing kit recited in the [‘984] patent would be
inoperable because no PCR could occur.”
The Federal Circuit’s appeared to be influenced by the evidence in the
case which included an admission by Life’s own witness that the Taq polymerase was one of the “main” and
“major” components of the accused kits.
Going forward, it will be interesting to see if other factors should be
considered in the “substantial portion” analysis under § 271(f)(1), such as
whether a component was cited by the patentee during prosecution as a
patentable distinction from cited art.
At the Spring 2016 Meeting I was
fortunate to moderate a panel of experts for the Joint Biotech Committee/FDA
Committee CLE presentation provided their insights on “Mars 101-International
and Interplanetary Considerations for GMOs: Patents, Export control,
Biodiversity and Regulation.” Our panel of experts includes Marian T Flattery, Assistant
Chief IP Counsel of DuPont Pioneer and DuPont Crop Protection, Professor Kan
Wang, from the Department of Agronomy at Iowa State University, Biotech
Committee Chair Debora Plehn-Dujowich, a partner at Prismatic IP Group and Kate
Hibbard, a partner at Greene Espel.
Kan Wang, Professor and Director of the Center for
Plant Transformation and Co-PI of the Crop Bioengineering Consortium at Iowa
State, led off the discussion, providing an overview of current techniques for
creating new traits in plants, ranging from Agrobacterium transformation, to
breeding in zones of high radiation (which would include Mars!), to the latest
gene-editing technologies, including TALENs (Transcription activator-like
effector nuclease) and CRISPR/Cas9. Professor
Wang also discussed various government approaches to regulating engineered
plants, including the process based approach of Europe and Japan (which focuses
on the method used to generate the new traits), the product/phenotype approach
of Canada which focuses on the features of the engineered plants), and the US
case by case approach, which looks both at the product and the process used to
create the product.
Plehn-Dujowich, partner at Prismatic Law Group (who
received her Ph.D. in the lab of Nobel Prize Winner Sidney Altman!) then provided an excellent overview of
conventions and treaties relating to genetic resources, including the
Convention on Biological Diversity (CBD), which strives for conservation of
biological diversity, the sustainable use of its components, and the fair and
equitable sharing of benefits arising from genetic resources. Debora also discussed The Nagoya Protocol on
Access to Genetic Resources and the Fair and Equitable Sharing of Benefits
Arising from their Utilization is a supplementary agreement to the CBD (“the
Nagoya Protocol”). The Nagoya Protocol
was adopted on October 29, 2010 as a supplementary agreement to the CBD, and
focuses on access and benefit sharing (ABS) for genetic resources. Additionally, Debora also provided her
insights on the Intergovernmental Committee on Intellectual Property and
Genetic Resources, Traditional Knowledge and Folklore (IGC), which has been
meeting for fifteen years at WIPO, and has been focused in meetings in 2016 on
whether there should be a mandatory disclosure requirement to identify the
source of genetic resources. Debora
updated us on the recent IGC meeting in Geneva, which Debora attended.
Flattery, Assistant Chief IP Counsel of DuPont
Pioneer and DuPont Crop Protection provided her insights on patent eligibility
issues relating to natural sweeteners (possibly patent eligible, depending on
the formulation), radiation bred mutant plants (likely not patent eligible, in
our scenario) and plants engineered using genetic editing techniques such as
CRISPR (likely patent eligible, in our scenario). As part of her analysis, Marian provided a
timely summary of the U.S. Patent and Trademark Office’s May 4, 2016 Guidance
on Patent Eligibility and the new Life Sciences examples. Marian also provided her thoughts on whether
inventions made on Mars on a U.S. owned space station would be governed by 35
U.S.C. § 105, and the possible impact of the Outer Space Treaty of 1967 on
patenting discoveries made on Mars. (35
U.S.C. § 105 provides “Any invention made, used or sold in outer space on a
space object or component thereof under the jurisdiction or control of the
United States shall be considered to be made, used or sold within the United
States for the purposes of this title, except with respect to any space object
or component thereof that is specifically identified and otherwise provided for
by an international agreement to which the United States is a party.”)
Hibbard, Partner at Green Espel also provided her
insights into asynchronous authorizations for export of genetically modified
plants, including risks to keep in mind with respect to export markets, whether
supply chain participants have a right not to handle genetically modified
organisms, and what litigation risks exist with respect to commercialization of
genetically modified plants without the necessary foreign approvals.
challenge to classic method of treatment claims in Bristol-Myers Squibb Co. v. Merck & Co., Inc. (Civil Action No.
15-560-GMS) may have patentees wondering if one of the last bastion of patent
eligibility in the life sciences is about to also be engulfed by the judicial
exception to patent eligibility.
Supreme Court’s ruling in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), where the Court held certain methods of optimizing treatment patent
ineligible, courts have expanded the scope of judicial exceptions to patent
eligibility, finding patent ineligible claims to technologies such as isolated
DNA having the same sequence as natural DNA; live-born cloned mammals; and
Myriad Genetics’ claims to methods of detecting breast cancer gene
mutations. Additionally, the PTO also
provided post Myriad guidance that
claims to purified small molecule drugs not markedly different from the natural
source are also not patent eligible.
November 17, 2015, the District Court for the District of Delaware granted a
12(b)(b) motion, holding patent ineligible method of treatment claims. Although facially similar to the claims in Mayo, the Endo claims recited not
only a first administering step and a measuring step to optimize treatment, but
also recited a second administering step which adjusted the dose based on the
measurement. Although the ruling in Endo Pharmaceuticals Inc. v. Actavis Inc.,
C.A. No. 14-1381-RGA (D. Del. Nov. 17, 2015) seemed to expand the Court’s
holding in Mayo to claims reciting a
second administering step, the Claims
from the Endo case and Mayo case otherwise appear similar when
compared side by side, below:.
A method of optimizing therapeutic
efficacy for treatment of an immune-mediated gastrointestinal disorder,
(a) administering a
drug providing 6-thioguanine to a subject having said immune-mediated
gastrointestinal disorder; and
A method of treating
pain in a renally impaired patient, comprising the steps of:
a. providing a solid oral controlled release dosage form,
i. about 5 mg to about 80
mg of oxymorphone or a pharmaceutically acceptable salt thereof as the sole
active ingredient; and
ii. a controlled release
determining the level of 6-thioguanine in said subject
having said immune-mediated gastrointestinal disorder,
b. measuring a creatinine
clearance rate of the patient and determining it to be (a) less than about 30
m[L]/min, (b) about 30 mL/min to about 50 mL/min, (c) about 51 mL/min to
about 80 mL/min, or (d) above about 80 mL/min; and
wherein the level of
6-thioguanine less than about 230 pmol per 8x108 red blood cells indicates a need to increase
the amount of said drug subsequently administered to said subject; and
wherein the level of
6-thioguanine greater than about 400 pmol per 8x108 red blood cells indicates a need to decrease
the amount of said drug subsequently administered to said subject
orally administering to said patient,
in dependence on which creatinine clearance rate is found, a lower dosage
of the dosage form to provide pain relief;
wherein after said administration to said
patient, the average AUC of oxymorphone over a 12-hour period is less than
about 21 ng•hr/mLd cells indicates a need to decrease the amount of said drug
subsequently administered to said subject
in a March 17, 2016 order, the District Court for the District of Delaware
addressed Merck’s challenge to what looked like a standard method of treatment
claim for treating lung cancer—exemplary claim 1 is shown below:
. A method of treating a lung cancer comprising administering a composition
comprising a human or humanized anti-PD-1 monoclonal antibody to a human with
the lung cancer, wherein the administration of the composition treats the lung
cancer in the human.
district court denied Merck’s 12(b)(6) motion to dismiss the case on the basis
that the claims were patent ineligible, the Court accepted Merck’s argument
that the claims were directed to the natural phenomenon of using T cells to
activate the immune system, thereby satisfying the first prong of a 101
analysis under Alice and Mayo.:
'999 patent claims treatment for lung cancer by using antibodies that inhibit
signals of PD-1, PD-Ll or PD-L2 to activate immunity to the cancer virus. The '999 patent relies on the scientific fact
that blocking activation of the PD-1 pathway enables the patient's T cells to
perform their normal biological activity of removing cancer cells. . . ..
the court concludes that, contrary to Bristol-Myers contention, the '999 patent
touches upon a natural phenomenon by using T cells to activate the immune
system. The inventors relied on the fact
that inhibiting "signals of PD-1, PD-L 1 or PD-L2 inhibit cancer
proliferation through the mechanism of the recovery and activation of immune function." This
interaction is a natural phenomenon.
Bristol-Myers Squibb Co. v. Merck & Co., Inc., (Civil
Action No. 15-560-GMS) (D. Del. March 17, 2016) at n.1 (citations omitted;
emphasis added). Turning to the second
inquiry under Alice, "whether the claims do significantly more
than simply describe these natural relations,” the court determined that read
in a light most favorable to the Bristol-Myer (the non-moving party) there were
“at the very least,” material factual disputes over “[w]hether the claims
amount to an implementation step,” that could not be resolved on a motion to
contends that the process method consists of administering a synthetic agent
through a single step to induce a natural reaction. Bristol-Myers insists that administering
anti-PD-1 antibodies is not a diagnostic step as in Mayo, but provides the
treatment itself. Whether the claims
amount to an implementation step is a complicated factual determination that
the court could better resolve after discovery.
Id. (citations omitted). . Regardless of the
ultimate outcome in Bristol-Myers, it
appears that litigants in cases involving method of treatment claims may want
to prepare to raise and defend against patent eligibility challenges.
Our panel of experts at AIPLA’s Spring 2016 meeting will explore the final frontier of patent eligibility for GMOs on Mars, including the “thorny” issue of whether exceptions for patent eligibility include both Terran and Martian natural principles, and the impact of the UN-sponsored Outer Space Treaty of 1967 on intellectual property rights in space. (The treaty, signed by 104 nations, appears to echo the sentiment expressed in patent eligibility cases that that the discovery and use of natural resources, in this case the moon and other celestial bodies, shall be carried out for the “benefit and in the interests of all countries” and “shall be the province of all mankind.”).
I have to confess that I find this topic fascinating because my father was at the controls of one of the successful Surveyor unmanned craft landings on the moon, and my brother-in-law is a rocket scientist for one of the leading players working on commercializing space travel.
Our expert panelists tackling this issue include Marian T Flattery, Assistant Chief IP Counsel of DuPont Pioneer and DuPont Crop Protection, Professor Kan Wang, from the Department of Agronomy at Iowa State University, and Biotech Committee Chair Debora Plehn-Dujowich.