A Judicial Axe for Sharp Drafting: The “Natural Phenomenon” Dilemma

** Special edition expert commentary on precis in vol 20 issue 2.

• Author Ben Mee[Click here for author details]
• EAP Date (approved for print): 19 November 2012

This paper critically analyses the US Supreme Court decision in Mayo Collaborative Services v Prometheus Laboratories Inc (“Prometheus”) against the backdrop of earlier decisions of the US Supreme Court. It may be that the approach in Prometheus was informed by US-specific considerations (particularly the ability to avoid a jury trial on obviousness issues). However, such an approach, tentatively explored by the High Court of Australia in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd and earlier cautioned against in National Research Development Corporation v Commissioner of Patents,ought not to be embraced by courts or patent offices in jurisdictions outside the US.

If courts in other jurisdictions were to adopt the Prometheus approach and rationale, in the context of method or product claims, emerging and/or controversial technologies and subject matter may be subject to a less transparent analysis than that which has informed the development of the law in respect of more conventional subject matter. Gene patents are an obvious candidate.

In the author’s opinion, any “threshold inquiry” into inventive ingenuity should not go beyond the face of the specification. Moreover, courts should only undertake substantive judicial investigation into whether a claimed invention involves a “sufficiently transformative” contribution having regard to what was known in the art, if at all, in circumstances where the patent otherwise meets the express requirements of the relevant domestic legislation, including inventive step.

 

Ben Mee is a lawyer practising in litigation, competition and intellectual property law at Allens Linklaters, Sydney. He graduated from the University of Tasmania in 2008 with a Bachelor of Science-Bachelor of Laws (Hons), and served in 2010 and 2011 as an associate to the Hon Chief Justice Robert French AC. His practice has a particular focus on the pharmaceutical, media, telecommunications and technology sectors.

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