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Hastings Alumni Mag-Spring 2014

{ SCHOLARSHIP } UC HASTINGS 17 It’s conventional wisdom among scholars that laws remain trapped in amber, but our interpretations evolve over time. Yet to a surprising degree, we keep grappling with the same conundrums that preoccupied our forebears. In the patent system, for example, lawmakers have debated for more than a century the distinction between a discovery and an invention—or between what exists and what is man-made. This question is so fundamental, according to UC Hastings Professor Jeffrey Lefstin, it borders on metaphysical. “What should be eligible for exclusive rights, and what do we regard as part of mankind’s common heritage?” Lefstin asks. Lefstin, who earned a PhD in biochemistry before getting a law degree, says his scientific background helps him “see the underlying issues” that inform discussions of ownership, especially as they relate to biotechnology. No matter what patent question is on the legal battlefront—be it software or human genes—Lefstin believes a historical analysis can shed light on the debate. He traces the history of patentability in a forthcoming article, because, he says, “these are not new questions. We need to pay attention to how people have been struggling for the past 160 years to distinguish between an invention and a discovery.” This question was at the heart of the Supreme “The restrictions on patents that the Supreme Court is now imposing are modern developments. If we look into the historical precedents on which today’s court relies, a very different picture begins to emerge.” — Professor Jeffrey Lefstin SEARCHING THE SOUL OF IP LAW Court’s 2013 decision Association for Molecular Pathology v. Myriad Genetics, which established that isolated human genes can’t be patented. Lefstin filed an amicus brief in support of Myriad’s argument that gene patents should be valid, based on a long lineage of patent jurisprudence. But, Lefstin says, the question of genes is less important than how we distinguish inventions and discoveries. “The restrictions on patents that the Supreme Court is now imposing are modern developments,” he says. “If we look into the historical precedents on which today’s court relies, a very different picture begins to emerge.” Lefstin continues, “American patent law reached the conclusion that an inventor might patent any practical application of a new discovery, and that standard served us well through far more radical technological transformations than the ones we experience today.” The Supreme Court will next address these issues in the context of software and other computer-implemented inventions, where the lower courts have been deeply divided. Lefstin says the key question in Alice Corporation v. CLS Bank, to be decided this year and for which he filed an amicus brief, will be whether the court adopts the approach it has taken with scientific discoveries to judge the patentability of abstract ideas. PROFESSOR JEFFREY LEFSTIN EXAMINES THE HISTORY OF PATENTABILITY


Hastings Alumni Mag-Spring 2014
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