Page 8 - Minnesota Vol 8 No 4
P. 8

Z. PETER SAWICKI AND JAMES L. YOUNG | Constitution Patenting Nature
Isa natural thing eligible for patent protection? Can you patent a plant, a gene or a bacterium?  e patent statute only lists four things that are patentable: “Whoever invents or discovers any new and useful [1] process, [2] ma- chine, [3] manufacture, or [4] com- position of matter ... may obtain a patent therefor ....” 35 U.S.C. § 101.  e patent statute says nothing about
“natural things.”
One of the  rst patents that we
know of that was granted to protect something natural was for “yeast, free from organic germs of disease, as an article of manufacture.” Louis Pasteur, U.S. Patent 141,072 (1873). Note the self-categorization of the invention as an “article of manufacture” by Louis Pasteur. Smart!
As attorneys, we know that when a statute has an alleged ambiguity, the courts step in to “interpret” the law. In a highly criticized decision, the U.S. Supreme Court (SCOTUS) held that patent protection excludes laws of nature, natural phenomena, and abstract ideas. Parker v. Flook, 437 U.S. 584 (1978).  ere have been sev- eral related SCOTUS decisions since then, and we won’t delve further into the nuances of SCOTUS decisions re-
The  rst patents that we know of that was granted to protect something natural was for ‘yeast, free from organic germs of disease, as an article of manufacture.’”
lating to biotechnology. Instead, our intent is to provide a sense of the di- lemma faced in protecting things nat- ural and to provide a guide as to what protection might be available.
As we have done in the past, let’s go through a client scenario.
Your client takes a stroll through the woods and comes across a tree that was hit by lightning. Growing right next to the tree is a  owering plant, brilliant in color, red and blue with a tinge of silver.  e client, all alone and happening to have a garden spade, quickly digs up the plant and secret- ly takes it home and nurtures it with bacon grease. Remarkably, the plant thrives and  owers.  e  owers when touched glow in the dark (assuming due to the bacon grease). Soon other like plants start to grow next to the original and when separated thrive on their own. Your client thoughts are: “Millions!”
But wait. If the plant reproduces so easily, how are millions going to be made? Others can simply buy one and then grow more. “Help!” the client says to you. “I need protection!” What should you do? Simple – direct your client to your favorite patent attorneys (see bios associated with this article).
In brief, there are three options that might provide patent protection for
Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clear- ance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and ef- fective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either [email protected] or [email protected]

   6   7   8   9   10