Albert and Vern Oldham Intellectual Property Law Lecture Series
Tuesday, March 5, 2013
3 pm in Room 152
Prof. Dan L. Burk, University of California, Irvine, School of Law
The Nature of Patentable Subject Matter
On November 30, 2012, the Supreme Court granted certiorari in Association for Molecular Pathology v. Myriad Genetics, Inc., agreeing to hear arguments on the single question “Are human genes patentable?” The Myriad case is the third in a series of recent subject matter cases heard by the Court, ranging across software, biotechnology, and medical diagnostics. Although many of the DNA molecules at issue in Myriad were constructed in the laboratory, opponents of DNA patenting have argued that such molecules do not meet the test for patentable subject matter if the they can ever be found occurring, if perhaps rarely or unexpectedly, in human cells. This approach to patentable subject matter is a variation on the “inherency” doctrine from patent law’s novelty requirement: when an invention is present but unappreciated or inaccessible in the prior art, it is said to be inherent. In novelty cases, the inherency question has been decided on whether the public was receiving the benefit of the invention before the inventor made it explicitly available. Although it is not at all clear that inherency should be imported into the subject matter inquiry at all, if it is, the standard of public benefit should be similarly decisive.
About the Lecturship:
The Albert and Vern Oldham Intellectual Property Law Endowment Fund was established at The University of Akron School of Law by Edwin W. “Ned” Oldham, senior partner at the former Oldham & Oldham Co., L.P.A., now Hahn Loeser + Parks, Akron. Albert and Vern Oldham founded Oldham & Oldham, a patent law firm, in 1947. The Fund is devoted to furthering The University of Akron School of Law’s mission in the area of intellectual property law. Ned Oldham sought to strengthen the teaching of patent, copyright and trademark law at the school and to focus on the importance of innovation and the entrepreneurial spirit that drives continued growth, progress and excellence in our community and nation.
For a list of past speakers click here