Journal Article

Patents on genes, usefulness, and the requirement of industrial application

Florian Leverve

in Journal of Intellectual Property Law & Practice

Volume 4, issue 4, pages 289-295
Published in print April 2009 | ISSN: 1747-1532
Published online April 2009 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpp003
Patents on genes, usefulness, and the requirement of industrial application

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Legal context

Since the early 90s, the patenting of genetic sequences has been met by fears that these patents would cover fundamental discoveries, which would have an unwarranted impact on biomedical innovation at large. In response to these concerns, it was argued that the requirement that an invention be susceptible of industrial application under the EPC be applied more stringently.

Key points

This paper examines the extent to which the EPO has responded to the above concerns. In particular, it investigates the manner in which the requirement of industrial application has been applied in the past decade with respect to inventions covering human genetic sequences. On the basis of that review, it appears that the requirement has evolved toward an actual test of usefulness of an invention, which is to be distinguished from the exclusion of discoveries and the broader requirement of technicality. Although the patentability of these subject matters has clearly increased the attention paid to the requirement of industrial application and led to the above developments, it may not be said that it has set a different bar to patentability in this specific field. Overall, the EPO has responded well to the challenges set by this patenting practice.

Practical significance

Whereas the requirement of industrial applicability was until recently not regarded as a strong deterrent to patentability, it emerged as a substantial constraint in the field of biotechnology. In effect, the EPO has secured a comprehensive test of usefulness that provided an appropriate barrier to the grant of patent on invention of a speculative nature.

Journal Article.  4665 words. 

Subjects: Arbitration ; Intellectual Property Law

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