Category Archives: patents

Law and the Multiverse Retcon #8: Orphan Black…Again

This is the eighth post in the Law and the Multiverse Retcons series, in which I discuss changes in the law (or corrections in my analysis) that affect older posts.  Or older retcon posts, since not longer after I wrote this Orphan Black Retcon I saw Season 2 Episode 5, which further complicated matters.  Soon after that I received an email asking about it, and I knew I would have to write the first Retcon Retcon.  Spoilers ahead!

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Law Comics

Law Comics is a new webcomic series created by Julia Powles and illustrated by Ilias Kyriazis.  As described by Powles in this wired.co.uk article, it’s “a project steered by non-boring lawyers to render iconic legal cases in full-colour glory, accompanied by short, authoritative, whimsical texts. The aim is to animate the magnificent stories of law to engage and empower the curious public.”

The first issue of Law Comics, Alice in Patent Land, is about patentable subject matter, which is an issue near and dear to me.  I approve of Powles’s explanation of the topic and the recent Supreme Court case of Alice v. CLS Bank.  Being so close to the issue it’s a little hard for me to say how approachable the comic makes it to those who aren’t, but I think it does a good job.  And certainly I approve of using the medium of comics to discuss the law.  I look forward to the next issue.

(As far as I can tell Law Comics doesn’t have its own site yet, but the comic is available at the wired.co.uk article and the Alice in Patent Land link to Patently-O.)

George Mason Law Review Article

I promise I’ll be back to comic books soon, but I have another publication announcement, this time a law review article I co-authored with F. Scott Kieff: Benefits of Patent Jury Trials for Commercializing Innovation, 21 Geo. Mason L. Rev. 865 (2014).  The article is part of a special issue focused on commercializing innovation.  The entire issue is online and includes a host of great articles from scholars such as Joshua D. Wright (now a Commissioner at the FTC), Damien Geradin, and Anne Layne-Farrar.

Law and the Multiverse Retcon #6: Orphan Black Redux

This is the sixth post in the Law and the Multiverse Retcons series, in which I discuss changes in the law (or corrections in my analysis) that affect older posts.  Or not so old posts in this case.  Barely a week ago I wrote this post about the TV series Orphan Black.  Today the US Court of Appeals for the Federal Circuit handed down a decision relevant to that post.  Spoilers ahead!

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Orphan Black

A few readers asked about the TV series Orphan Black a while back.  Now that the show is in its second season (and I finally got around to watching the first one and have caught up with the second one), I thought I’d address the central legal questions raised by the show.  Moderate spoilers below if you haven’t seen past the first episode or so, followed by big spoilers if you haven’t seen the season one finale.

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Landslide Article

I recently co-authored an article with Professor Brad Desnoyer and Janet Fries discussing superhero-related intellectual property topics, both real and fictional.  Last month the article was published in Landslide, the magazine of the ABA section of IP law, as the cover story!  You can read the article for free online. Thanks to Brad and Janet for their excellent work on the article and to David Postolski for putting everything together.

ABA Annual Meeting Panel Tomorrow

Just a reminder for anyone attending the ABA Annual Meeting in San Francisco this week: I will be presenting “IP and the Comic Book Superhero” with Brad Desnoyer and Janet Fries tomorrow, Friday, August 9th from 4pm – 5pm at the InterContinental San Francisco.  Complimentary CLE credit is offered with the program.  We hope some of the attorneys and law students in the audience can make it out there!

And Now a Shameless Plug

Pardon the slightly off-topic post (I promise we’ll be back with more superheroes and supervillains soon), but an article I co-wrote with F. Scott Kieff was just published in the Emory Law Journal: James E. Daily & F. Scott Kieff, Anything Under the Sun Made by Humans: Patent Law Doctrines as Endogenous Institutions for Commercializing Innovation, 62 Emory L.J. 967 (2013).  You can find the full article for free here.  Scott and I wrote the article as part of our work with the Stanford University Hoover Institution’s Project on Commercializing Innovation.  To give you an idea of what it’s about, here’s the abstract:

This Essay outlines a comparative institutional analysis among various doctrines in patent law to show how they can have different impacts on the way inventions are commercialized. It builds on a prior body of work about the positive role that property rights in patents can play in commercializing innovation to show how recent shifts in approaches to the particular legal doctrine known as patentable subject matter can be expected to have different effects on the commercialization of inventions than prior approaches. It concludes that, to the extent society wants to increase the overall rate of invention commercialization and increase overall competition as reflected in diversity in firm size among participants in the markets for commercializing innovation, society should consider reversing course on the law of patentable subject matter and return to an approach that is closer to the “anything under the sun made by man” view that was championed by the Supreme Court in the 1980s and by Congress through most of the second half of the twentieth century, updating only its gender biased language.

As you might guess, it’s a little denser reading than our usual material, but I thought some of our readers might be interested.

Law and the Multiverse Retcon #6: Genetiks and Human Gene Patents

This is the sixth post in our Law and the Multiverse Retcons series, in which we discuss changes in the law (or corrections to our analysis) that affect older posts.

Today I have a quick post about a recent Supreme Court case that was under consideration when I wrote this post about the graphic novel Genetiks.  As mentioned in the post, the Supreme Court had recently heard the case of  Association for Molecular Pathology v. Myriad Genetics, Inc., which was intended to answer the question “are human genes patentable?”  Since then the Court has handed down its decision, which many news outlets summarized as “no.”  The truth is a little more nuanced than that*, but in any event the Court’s decision doesn’t change the ultimate conclusion in my original post, which was that what the company in Genetiks was portrayed as doing would not be possible under US law.  If anything the Myriad decision has only cemented that.

Relatedly, I’ve gotten some questions from readers about the series Orphan Black, which apparently deals with some similar issues as Genetiks.  I’ve heard good things about the series and intend to review it at some point in the future.

* Tempted as I am to delve into the minutiae of patent law, since that’s my area of interest, I will limit myself to a brief(-ish) summary.

Essentially, the Court held that DNA molecules cannot be patented if they are the same as a DNA molecule (or part of one) that occurs naturally in the human body, even if the patent claims only isolated, purified DNA molecules, which do not occur naturally.  The Court based its decision on the fact that isolation and purification do not change the information content of the genetic sequence, which was the actual invention as far as it was concerned rather than the DNA molecule in a chemical sense.

However, the Court also held that cDNA molecules can be patented, even if the cDNA molecule is nothing more than an unpatentable DNA molecule run through a standard biotech process.  According to the Court, that process takes an unpatentable product of nature and makes it into a patentable manufacture or composition of matter in a way that isolation and purification do not.  This is evidently true even though the information content of the DNA molecule and its corresponding cDNA molecule are the same.  It is difficult to reconcile these results on their face.

It is worth noting that the Patent Act itself says nothing about products of nature.  The list of “inventions patentable” contains no exceptions at all, only an affirmative list.  The Court arrived at its conclusion by reading in / creating an exception that is not at all present in the statute but is instead derived only from prior Supreme Court cases.

The practical upshot of all this is that Myriad will lose its right to exclude others from performing clinical testing for the BRCA1 and BRCA2 mutations.  More broadly, single-gene testing is now anybody’s game.  But Myriad and other biotech companies will retain other, less-valuable patent rights associated with human genes.

That’s about all I can say without getting too soapboxy.  For more on this kind of thing, see my forthcoming paper, James E. Daily & F. Scott Kieff, Anything Under The Sun Made By Humans: Patent Law Doctrines As Endogenous Institutions For Commercializing Innovation, 62 Emory L.J. (forthcoming July 3, 2013).

ABA Annual Meeting

In other convention news, I will be presenting at the ABA Annual Meeting in San Francisco with Brad Desnoyer and Janet Fries.  Our panel on “IP and the Comic Book Superhero” will be Friday, August 9th from 4pm – 5pm at the InterContinental San Francisco.  Complimentary CLE credit is offered with the program.  We hope some of the attorneys and law students in the audience can make it out there!