Quarterly Journal 50-3 Volume 50, Issue 3 September 2022

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The AIPLA Quarterly Journal, a publication of the American Intellectual Property Law Association, is housed at the George Washington University Law School and is edited and managed by an Editorial Board of intellectual property experts and a staff of law students under the direction of the Editor-in-Chief, Professor Joan Schaffner.

The Quarterly Journal is dedicated to presenting materials relating to intellectual property matters and is published four times per year. Editorial Board members (all of whom are lawyers) are selected based upon demonstrated interest and experience, and student staff members are selected from the students of the GWU Law School.

This year marks the 50th Anniversary of the Quarterly Journal.  Watch for the special anniversary edition later this year.  Many thanks to our issue advertiser CAS!  We'd also like to thank our 125th Anniversary Sponsors.
QJ 50.3 - Marijuana and Patents: The Complicated Relationship Between Patent Rights and the Federal Criminalization of Marijuana

Reza Roghani Esfahani and Howard Bromberg

MARIJUANA AND PATENTS:  THE COMPLICATED RELATIONSHIP BETWEEN PATENT RIGHTS AND THE FEDERAL CRIMINALIZATION OF MARIJUANA 

Despite being expressly protected by the U.S. Constitution, patent protection and enforcement for marijuana-related inventions is mired in many questions. These questions are a subset of the contradictions in the law of marijuana, where the federal government prohibits marijuana use and yet many of the states legalize, regulate, and tax it. In patent procurement context, these questions arise because of the interplay between marijuana prohibition as a Schedule I drug and the patentability requirements of the Patent Act. In patent enforcement context, these questions are the result of the federal judiciary’s responsibility to interpret and administer all federal laws—including the Controlled Substance Act, classifying marijuana as a Schedule I drug, and the Patent Act, demanding remedy for infringement of patents that necessarily advance illegal activity. This article examines the interface of some of the patentability requirements of the Patent Act with marijuana-related inventions. The article concludes that although marijuana-related inventions are likely patentable, criminalization of marijuana affects the quality of the granted patents. Further, this article identifies several issues that arise in enforcing a marijuana-related patent in federal court. These issues may include securing representation, dangers of self-incrimination, and identifying infringing parties. As a byproduct of these issues, this article concludes that the marijuana industry may be particularly vulnerable to frivolous lawsuits by Patent Assertion Entities.

QJ 50.3 - Tragedy of the Commons: Why the Supreme Court’s Literal Application of “Product of Nature” Rule in AMP v. Myriad Genetics Necessitates a Legislative Change to 35 U.S.C. § 101

Henry Loznev

TRAGEDY OF THE COMMONS:  WHY THE SUPREME COURT’S LITERAL APPLICATION OF “PRODUCT OF NATURE” RULE IN AMP V. MYRIAD GENETICS NECESSITATES A LEGISLATIVE CHANGE TO  35 U.S.C. § 101

The Supreme Court’s literal application of the “product of nature” rule in AMP v. Myriad Genetics necessitates a legislative change of 35 U.S.C. § 101. Heavily influenced by the writings of John Locke, the founding fathers appreciated the importance of protecting property acquired through physical labor. In line with these ideals, the legislature established patent statutes that allowed the federal government to incentivize and reward innovation through patent grants. This original purpose, however, was thwarted when the Supreme Court expanded on the “product of nature” exception from the current iteration of the patent statute and declared gene patents invalid. This decision ignored the intricacies of genomic research and led to a rise in trade secret use that limits further research in the field. Furthermore, the decision can result in the diversion of funds from potentially life-saving research in the future. The legislature needs to address this issue by ensuring access to patents for innovators that discover new and useful applications of the products of nature. As a possible solution, this note proposes enabling USPTO with broad rule-making authority, akin to that given to the SEC, to retain the property law’s original spirit. Thus, USPTO would be able to recognize that different fields of technology with their unique research applications may necessitate different requirements for patent grants.
QJ 50.3 - Not So Natural Phenomena: A Look at § 101’s Impact on Biotech Patents

Jordan M. Cowger

NOT SO NATURAL PHENOMENA:  A LOOK AT § 101’S IMPACT ON BIOTECH PATENTS 

This note seeks to address the uncertainty surrounding patent eligibility for DNA and DNA-derivative pharmaceuticals. Inconsistent judicial decisions and lack of action by the Supreme Court make this issue ripe for resolution. Due to the importance of DNA-derivative pharmaceuticals—not just to precision medicine but also to the United States’ position as a life science leader in the global economy—Congress must take action now. Following Europe’s approach, Congress should adopt a revised version of the draft Tillis-Coons STRONGER Patents Act, which includes an additional subsection to section 101 specifically calling for patent protection for DNA-derivative inventions.

QJ 50.3 - Technological Fault Lines: The Problems with Tailoring Patent Eligibility at the USPTO

Joshua A. Lopez

TECHNOLOGICAL FAULT LINES: THE PROBLEMS WITH TAILORING PATENT ELIGIBILITY  AT THE USPTO

Many members of the patent community seek clarification of subject matter eligibility law, but administrative rulemaking would be a problematic approach. The Supreme Court has carved out what qualifies as a “process, machine, manufacture, or composition of matter” under 35 U.S.C. § 101 - Inventions patentable. Although the Court has dealt with this statute in decades past, it began in 2012 to reinvigorate the rule that “laws of nature, natural phenomena, and abstract ideas” are not patent eligible. Mayo, Myriad, and Alice mark the Court’s recent encounters with section 101. Respectively, these cases have heightened the patent standard for three major areas: diagnostic tools, genetics, and software. If Congress grants the USPTO rulemaking authority to clarify or enhance the eligibility standards, the agency’s rules would likely reflect a similar technological split. This is problematic because technological discrimination is prohibited under TRIPS Article 27, and divided USPTO rule makers could invite harmful divide-and-conquer influence. Legislators should work to make section 101 more fair and sensible, but they should delegate rulemaking authority with caution.

Knobbe Martens

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