Reconsidering Experimental Use

Abstract

In the years since the Supreme Court began to narrow the scope of patentable subject matter, uncertainties in the law have had a deleterious impact on several important innovation sectors, including in particular, the life sciences industry. There are now initiatives to expand patentable subject matter legislatively. In this article, I suggest that the Supreme Court’s jurisprudence is an outgrowth of the concern that patents on fundamental discoveries impede scientific research. To deal with that issue, any measure to expand the subject matter of patenting should be coupled with a parallel expansion of defenses to infringement liability, including the restoration of a robust research defense. Most developed countries recognize strong defenses in favor of researchers and as OECD studies show, several are developing creative environments that lure scientists to relocate. It is therefore essential that the United States move quickly to enact laws that both encourage and facilitate research and that will preserve its technological dominance.

Keywords: patent, research exemption, patentable subject matter, genes, diagnostics