Patent Border Wars : Defining the Boundary between Scientific Discoveries and Patentable Inventions

Drawing an appropriate boundary between unpatentable natural phenomena and patentable inventions is critical in preventing the patent laws from unduly restricting access to fundamental scientific discoveries. Some would argue that, particularly in the U.S., patents are being issued which purport to claim a novel product or process but which in effect encompass any practical application of a fundamental biological principle. Examples include gene patents, which Congress is considering banning, and patents relating to biological correlations and pathways, such as the patents at issue in the headline-grabbing LabCorp v. Metabolite and Ariad v. Eli Lilly litigations. In view of the mounting concern, it seems likely that Congress and/or the courts will address the issue, and perhaps substantially shift the boundary