The Intellectual Property Issue

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The Disaggregation of Intellectual Property

How the laws of intellectual property have grown--and grown apart

The following is an abridged version of the speech that Professor Fisher delivered upon accepting the Hale and Dorr Chair in Intellectual Property Law.

Over the course of American history, the law of intellectual property has gradually become fragmented into industry-specific subfields. Until now, this trend has been largely inadvertent and uncoordinated. Should it be applauded and pursued deliberately or resisted? I will approach that question circuitously--by first outlining the ways in which the fields of doctrine that together constitute intellectual property law have evolved, and only then considering whether we should strive to disaggregate them.

Copyright

There are three main zones of intellectual property law: copyright, patent and trademark. Copyright law provides long-term, medium-strength protection for original forms of expression. Copyright originated in a 1790 statute, adopted under the auspices of Article I, Section 8, Clause 8 of the United States Constitution. In the first copyright statute, Congress protected three kinds of works: books, maps and charts.

Since then, Congress and the courts cooperated in expanding the set of protected creations. For example, musical compositions were added in 1831. Photographs became protected in 1865. (Today, not only is xeroxing a landscape photograph clearly illegal, but even taking a photograph substantially similar to a photograph someone has previously taken may give rise to an infringement claim.) Sound recordings--as distinct from the compositions they embody--were added in 1971. Software was formally added in 1978. Architecture became subject to copyright in 1990.

Patent

Patent law, by contrast, provides short-term, strong protection for inventions. The subject-matter coverage of patent law has grown, with a few notable exceptions, in ways comparable to copyright.

Patents--more specifically, utility patents--are conventionally divided into two broad categories: products (meaning inventions in the conventional sense) and processes (meaning new ways of doing things). Products are, in turn, subdivided into three subcategories: machines, compositions of matter and a residual category called "articles of manufacture." Laws of nature, mathematical algorithms and naturally occurring substances were traditionally construed to be outside the zone of patent protection.

During the past 200 years, lawmakers have made a series of additions to the patent field. For example, in the 1930 Plant Protection Act, Congress extended special, limited patent protection to asexually reproduced new plant varieties--like chrysanthemums in new colors, created through radiation. The 1970 Plant Variety Protection Act extended limited patent protection to sexually reproduced new varieties.

Judges have played a part in this expansion as well. In the Parke-Davis case (1911), Judge Learned Hand LL.B. 1896 ruled that adrenaline, a purified form of the suprarenal gland, could be patented. Among the many derivatives of this seemingly innocuous proposition is patent protection for genes. Beginning in the 1990s, the Federal Circuit has consistently upheld patents on purified and isolated full-gene sequences whose physiological functions (in other words, the proteins for which they code) have been identified. Plainly, genes are "naturally occurring substances." But the courts take the position that, in Arti Rai's words, an "isolated gene sequence . . . differs from the DNA base pair sequence that is found on the chromosome in nature," because it has been disentangled from the surrounding "junk" DNA--so called because it has no apparent coding function.

In the 1980 Chakrabarty decision, the Supreme Court held that a genetically engineered bacterium is patentable, announcing broadly that "anything under the sun that is made by man" can be patented. In 2001, the Court adhered to that position, ruling that new plants could be protected, either narrowly under the PPA or PVPA, or broadly using general utility patents.

Since the 1980s, a series of court decisions have removed virtually all impediments to the patenting of software in the United States, resulting in a steady increase in applications and grants. The Patent and Trademark Office, meanwhile, quietly began granting patents on business methods--like Amazon.com's one-click online checkout system--which had been considered unpatentable on the ground that they consisted of abstract ideas. When challenged, the PTO's policy (though not Amazon's specific innovation) held up in court, leading to a vast wave of filings.

In the spirit of a clock striking 13, the PTO has recently issued a few patents on athletic moves--for example, on an unusual way of holding a putter. Patents of this variety are not likely to survive judicial scrutiny. But they are nonetheless suggestive of a worrisome trend.

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