Abstract

This case discussed in this article is about two methods of editing DNA: one that has infinitely more lucrative applications because it can edit human DNA (plus all animals and plants), another that works in cell-free environments. Whether inventions are separate or part of the same innovation is an important factor in patent interference disputes; if there are two patentably distinct inventions there cannot be interference. One party in this case lost its argument that there was only one invention at issue, but returned with a second interference claim, arguing that it was the first inventor to constructively reduce to practice the animal and plant DNA editor. In this article, the author examines the nuances and intricacies of the patent process in the world of biology, and how patent lawyers must possess a level of knowledge in disciplines related to the inventions they seek to protect. This is necessary, for example, in understanding whether an invention is a significant improvement over prior innovations. The author also shares the importance of confidentiality especially when potentially groundbreaking (and lucrative) inventions are in development.

Author

Adrienne B. Naumann (adriennebnaumann@uchicago.edu) practices intellectual property law at the Law Office of Adrienne B. Naumann in Skokie, Illinois. She has held leadership positions relating to patents, science, and technology law with the Chicago Bar Association and the Converging Technologies Association. She currently serves as Secretary on the Board of the University of Chicago Women’s Alliance. Ms. Naumann has also written numerous articles on intellectual 56 Journal of Emerging Issues in Litigation property law and her book United States Federal Intellectual Property Developments includes discussion of decisions under the Defend Trade Secrets Act as well as those by the Supreme Court and was published by Pincus Professional Education.

About
The Journal on Emerging Issues in Litigation is a co-production of HB, Fastcase, and Law Street Media. You can also hear the complementary (and complimentary) Emerging Litigation Podcast wherever podcasts appear. For questions, contact Tom Hagy, Editor in Chief, at Editor@LitigationConferences.com.