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Joly, Yann; Hemmings, Francis --- "Bilski v. Kappos and Biotechnology Patents: Back to the Future?" [2012] ELECD 132; in Rimmer, Matthew; McLennan, Alison (eds), "Intellectual Property and Emerging Technologies" (Edward Elgar Publishing, 2012)

Book Title: Intellectual Property and Emerging Technologies

Editor(s): Rimmer, Matthew; McLennan, Alison

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781849802468

Section: Chapter 2

Section Title: Bilski v. Kappos and Biotechnology Patents: Back to the Future?

Author(s): Joly, Yann; Hemmings, Francis

Number of pages: 21

Extract:

2. Bilski v. Kappos and biotechnology
patents: back to the future?
Yann Joly and Francis Hemmings

New processes will undoubtedly play a crucial role in the continuing
development of biotechnology. In this chapter, developments in process
patentability that have been generated by the 2010 case of Bilski v. Kappos1
will be examined with particular emphasis laid on the concept of balancing
of rights: employing a patent regime as a means to stimulate innovation
requires a delicate balance to be struck between the rights granted to
inventors on the one hand and the rights of access of the public on the
other. In most patent regimes, that balance is achieved in part by allowing
inventors to patent inventions, but not `laws of nature, physical phenom-
ena, and abstract ideas' [hereinafter referred to as fundamental principles].2
While this balancing act appears to be simple, in practice the application of
the distinction between the two presents a considerable challenge and the
topic remains the subject of ongoing debate.
Slight changes to the scope of patentable subject matter can have
substantial consequences for processes in the biotechnology field, as exem-
plified by the case of Association for Molecular Pathology v. United States
Patent and Trademark Office, where a claim for patent protection of a
diagnostic method for breast cancer was refused at first instance.3 The
Court said that it sought to protect a fundamental principle.4 On appeal,
the Court of Appeals for the Federal Circuit partially overturned the first
instance decision, ...