Myriad and Prometheus: Do Patents "Preempt" Follow-On Research?

[author: Hal Wegner]

MyriadThe patent challengers in the Myriad case placed great stock in the argument that claims to "isolated DNA" (because of their alleged breadth) created a "research preemption."  The argument is keyed to recent Supreme Court precedent such as Mayo v. Prometheus.  In their certiorari petition a year ago in Myriad, the patent challengers argued that patents "preempt researchers . . . and pose[ ] a serious threat to scientific freedom and advancement."

The Federal Circuit today, and the Supreme Court the Next Time:  While it appears that a split panel at the Federal Circuit may very well reject this argument, the more fundamental point is not addressed by the patentees that makes appellate proceedings at the merit stage at the Supreme Court problematic.

To deal with that point, the more fundamental question must be asked:  Given a public right to experiment "on" a patented invention, how then does the grant of any patent "preempt" research?  This issue is addressed in a new paper, Can Any Patent "Preempt" Follow-On Research?

Hal Wegner is a partner at Foley & Lardner LLP and the former Director of the Intellectual Property Law Program and Professor of Law at George Washington University Law School.

We thank Mr. Wegner for allowing us to provide a copy of his paper to Patent Docs readers.