Bioethics Blogs

Tun-Jen Chiang on Patentable Subject Matter

Patent law is usually justified on utilitarian grounds. To be sure, significant contrary views have appeared in recent scholarship. For example, Professor Robert Merges’ work provides a partly Lockean  account of intellectual property. The dominant view, nonetheless, is that the rules of patent law serve consequentialist goals of inducing invention, commercialization, and disclosure.  In support of this view, scholars often cite the moribund state of the “moral utility” doctrine and the Constitution itself, which empowers Congress to enact laws that would “promote the Progress of Science and Useful Arts.” Professor Tun-Jen Chiang’s forthcoming article, “Competing Visions of Patentable Subject Matter,” challenges this account as a descriptive matter insofar as it relates to the judicially recognized exclusions from patentability.

Chiang explains that, once one strips away the cost-benefit rhetoric of cases like Association for Molecular Pathology v. Myriad Genetics and Mayo Collaborative Services v. Prometheus Laboratories, the Supreme Court’s decisions in these cases can be understood as reflecting moral concerns.  As an initial matter, though, Chiang notes that the excessive monopoly cost theory provides an attractive justification for the exclusion of laws and products of nature, abstract ideas, and the like from patentability. Because terms like “law of nature” are not self-defining, it makes intuitive sense to understand them as labels for patent claims that fail the cost-benefit balancing test. In Chiang’s view, though, close inspection of the Court’s opinions shows that the utilitarian theory does not do the work that the Court’s rhetoric about disproportionate rewards to would-be patentees and preemption of downstream research might lead one to believe.

The views, opinions and positions expressed by these authors and blogs are theirs and do not necessarily represent that of the Bioethics Research Library and Kennedy Institute of Ethics or Georgetown University.