Joshua D. Sarnoff Answers to Questions for the Record of Senator Mazie K. Hirono, Submitted to Senate Judiciary Committee Chairman, Hon. Lindsay O. Graham June 4, 2019 Subcommittee on Intellectual Property Hearing on 'The State of Patent Eligibility in America: Part I'

22 Pages Posted: 21 May 2020

Date Written: June 26, 2019

Abstract

These written responses to Senator Hirono’s questions followed the testimony of Joshua D. Sarnoff, Professor of Law, DePaul University submitted to the Intellectual Property Subcommittee of the Senate Judiciary Committee following its hearing on June 4, 2019 to revise patent eligible subject matter. The responses address: (1) ”whether Congress needs to revise or to address inconsistency in the application of current eligibility doctrine; (2) how to understand a “field of technology,” what we can learn from other jurisdictions that apply a technology test, and how to amend the bill if it continues to focus on technology; (3) clarifying what kinds of inventions or what fields of technology should be explicitly excluded from patent eligibility; (4) how to clarify standards for disclosure and functional claiming under Section 112; (5) whether to codify obviousness-type double patenting and how the doctrine relates to pharmaceutical pricing; and (6) the lack of due process or takings concerns should Congress codify current exemptions or expand eligibility, and the potential concern for a constitutional taking should Congress restrict eligibility and apply the change retrospectively to issued patents.

Keywords: discovery, invention, patentable subject matter, patent eligibility, novelty, utility, useful Arts, technological, field of technology, technical effect, scientific principles, natural phenomena, abstract ideas, unconstitutional, taking, due process, precedent, TRIPS agreement

JEL Classification: D61, D63, D64, H41, K11, K21, K33, O30, O31, O32, O33, O34, O38, O39

Suggested Citation

Sarnoff, Joshua D., Joshua D. Sarnoff Answers to Questions for the Record of Senator Mazie K. Hirono, Submitted to Senate Judiciary Committee Chairman, Hon. Lindsay O. Graham June 4, 2019 Subcommittee on Intellectual Property Hearing on 'The State of Patent Eligibility in America: Part I' (June 26, 2019). Available at SSRN: https://ssrn.com/abstract=3577315 or http://dx.doi.org/10.2139/ssrn.3577315

Joshua D. Sarnoff (Contact Author)

DePaul University College of Law ( email )

25 E. Jackson Blvd.
Chicago, IL Cook County 60604-2287
United States
312-362-6326 (Phone)

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