Patenting Medical and Genetic Diagnostic Methods, by Eddy D. Ventose, Edward Elgar Publishing, 2013, 232 pages, $120, ISBN 978-1-78100-177-6.
Patenting Medical and Genetic Diagnostic Methods is a meticulous examination of patent protection for methods of medical treatment and genetic diagnostic methods in the United States. It is recommended for patent attorneys and law students who plan to practice intellectual property law. The book is an expansion of a chapter the author wrote in a previous book, Medical Patent Law: The Challenges of Medical Patents.
Following the introduction in Chapter 1, Chapter 2 addresses early U.S. decisions on patentability of methods of medical treatment. As the author explains, these decisions were often inconsistent. In one 1883 decision, ex parte Brinkerhoff, it was held that “methods or modes of treatment of physicians of certain diseases are not patentable,” based on a judgment that medical processes could not reliably produce consistent results. But medical and scientific knowledge evolved and Brinkerhoff was overruled in 1954 by ex parte Scherer, which accepted that methods of treatment by surgery, therapy, and diagnostic methods were patentable.
Chapter 3 is a discussion of legislative efforts to exempt physicians and related health care entities from patent infringement lawsuits. Chapter 4 is a detailed examination of leading cases on patent eligibility relevant to Section 101 of the Patent Act, the section that affords patentable protection to anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Cases discussed in depth are Gottschalk v. Benson, Parker v. Flook, Diamond v. Diehr, and Bilski v. Kappos. Ventose assesses whether any general principles emerged from these decisions that are applicable to patenting medical and genetic diagnostic methods.
Chapters 5 and 6 discuss cases considered by the Federal Circuit and the Supreme Court. Among the cases receiving prominent treatment is Mayo Collaborative Services v. Prometheus Laboratories, which addressed attempts to patent laws of nature. Unfortunately, this book was published before the recent and highly anticipated Supreme Court decision in Association for Molecular Pathology et al. v. Myriad Genetics, Inc., et al. In Myriad the Court unanimously held that claims to isolated DNA sequences do not quality as patent-eligible subject matter. No doubt an update on this case will appear in any subsequent editions of the book.
Interestingly, though this book is about U.S. law, author Eddy V. Ventose does not live or work nor was he raised in the United States. He grew up on the island of St. Lucia, was educated at Oxford and Cambridge, and is a professor at the University of the West Indies in Barbados. Ventose has made an important contribution to legal literature with Patenting Medical and Genetic Diagnostic Methods, an exhaustively researched and thoroughly documented work. Although its extensive analysis makes it less suitable for general practitioners, it would be a valuable addition to law school libraries and for patent practitioners. It is also suitable for readers interested in legal history or the evolution of medical patents. Along with detailed legal analysis of cases the book contains a helpful table of cases, table of national and international legislation, bibliography and comprehensive index.
Donna M. Fisher is the law librarian at Senniger Powers LLP, St. Louis MO.