Twisted logic of patenting Life and DNA lessons from American precedents

Abstract

With the US directly or indirectly setting standards for the rest of the world in the patenting of life and DNA, Pavan Mamidi and Pramod Reddy explore the shortcomings in American patent policy and propose a re-examination of patenting criteria and institutional arrangements that impact technological choices. They hope to instruct policy making in the rest of the world in terms of what not to copy from the Americans.

By questioning the purpose of intellectual property, the authors aver that extending proprietary interests over certain items is not contingent upon considerations of technical expediency alone and, contrary to the existing paradigm in IP thinking in the US, historical experience, reasonableness, economic efficiency, broader policy criteria and political contingency also must be given due consideration.

Coming to the actual criteria of patentability, in addition to 'novelty' and 'utility', the criterion of 'non-obviousness' was introduced to qualify novelty with the condition of 'non-triviality' or 'technical accomplishment'. This is undertaken by the 'Phosita' ('person having ordinary skill in the art') questioning process where the courts make an appeal as to whether this fictitious artisan would have anticipated the given technical idea or not.

Mamidi and Reddy question the adequacy of the 'Phosita' method, and suggest a methodology to evaluate and think about patentability criteria while retaining its sensitivity to policy aims. Examining agency relationships formed between decision making institutions such as the US Patents Office and the courts in the light of decisions regarding the patenting of genetic material, the authors highlight the mismatch between control and competence and urge that we pay attention to how we structure our institutional arrangements so as to avoid the risk of incompetent entities making bad choices.