IBL Center Fall Speaker Series:  Innovation Law Scholarship in Action

Presenters: Dmitry Karshtedt - Associate Professor of Law @ George Washington University 

Sean B. Seymore - John P. Murphy Foundation Professor of Law @ Notre Dame Law School

Mark A. Lemley - William H. Neukom Professor @ Stanford Law School

Partner, Durie Tangri LLP

“The Death of the Genus Claim”

          The central feature of patent law in the chemical, biotechnology, and pharmaceutical industries is the genus claim—a patent that covers not just one specific chemical but a group of related chemicals. Genus claims are everywhere, and any patent lawyer will tell you they are critical to effective patent protection.

            But as we show in this presentation, the law has changed dramatically in the last thirty years, to the point where it is nearly impossible to have a valid genus claim.  Courts almost always hold them invalid, either at trial or on appeal.  Remarkably, courts do this without having acknowledged that they have fundamentally changed an important area of law. More remarkably, patent lawyers and patent owners don’t seem to have noticed. Invention, investment, patenting, and patent litigation continue much as they had before.  It’s just that the genus patents that are thought to be the basis of this activity generally end up invalid. 

            We document this surprising shift in the law. We explain why we think it represents both bad law and bad policy. We also explain why it hasn’t seemed to matter, and what that fact says about the relevance of patent doctrine more generally.

Join us live in BLB 245 or via Zoom:  https://uiowa.zoom.us/j/98527786274