Innovate Articles

Recognizing 35 U.S.C.101, 102, 103, and 112 in Jurassic Park

Renee Shaw

2020 marked the 30th Anniversary of Michael Creighton's epic novel Jurassic Park. This book directed the trajectory of my first career as a technical research specialist and my current pursuit of intellectual property licensing professional.

First published in 1990, Creighton's novel intercalated burgeoning genetic engineering techniques with science fiction to produce an intellectually stimulating tale respected by both scholars and Sci-Fi aficionados. The story's premise: extinct dinosaurs are reintroduced into present-day existence using DNA extracted from fossilized material. Not surprising, the dinosaurs are unsuccessfully assimilated into a zoo-like habitat on a remote island[1]. While some (not me) have criticized Creighton for employing scientific poetic license to enhance the literary and cinematic drama of Jurassic Park, few have scrutinized the legal latitude taken within the novel. The intellectual property implications involving the fictitious R&D company, International Genetic Technologies, Inc (InGen ) begs to be examined!!!

The novel closed with InGen filing for Chapter 11 bankruptcy protection on October 5, 1989. Because cataclysmic mayhem broke out on Isla Nublar (Site 1) in August of the same year, company lawyers attempted to mitigate their losses by liquidating assets before the Park officially opened. Given this information, it is fair to hypothesize that both the technological capabilities in genetic engineering as well as U.S. laws regarding intellectual property owned or licensed by the parent company were those applicable to the mid and late1980's.

Noteworthy legal embellishments were taken regarding InGen's "patented" dinosaurs. I feel it is safe to speculate that before the mythical law firm of Cowan, Swain, and Ross engaged InGen as a client, the firm would have comprehensively appraised the company's assets and liabilities and evaluated the commercial potential of the proposed patentable technology. The Firm would have mobilized their IP Management team and probably engaged outside counsel to provide a comprehensive patentability analysis to assess among other things if the tech satisfied 35 U.S.C.101, 102, 103, and 112 requirements e.g.:

1. whether the invention created by John Hammond and Dr. Henry Wu (company chief geneticist) was patent-eligible
2. if the technology to regenerate extinct animals from fossilized DNA could be described as useful, novel, and non-obvious
3. whether a patent could be enforced, and if so, the potential scope of the claims, and
4. whether the product and process of InGen would infringe the enforceable rights of a third party.

Herein lies a conundrum in the storyline and the slippery slope of subject matter eligibility.

Laws of nature, natural phenomena, and abstract ideas are patent ineligible

Creighton alludes to "patented" dinosaurs. As a U.S. company (headquartered in Palo Alto, CA), InGen would have been bound by the prevailing laws regarding patents. The Constitutional statute governing patents is codified in Sections 100 - 105 of  Title 35 of the United States Code. At a minimum, a patent may be conferred to:

                        "Whoever invents or discovers any new and useful process,

                        machine, manufacture, or composition of matter, or any

                        new and useful improvement thereof may obtain a patent

                        ..., subject to the conditions and requirements of this title"[2].

Caveats to the exclusivity of patent rights is that the invention must be novel, non-obvious, and not directed toward a judicial exception i.e. laws of nature, physical phenomena, and abstract ideas.[3] With one or more patents, InGen could prevent others from making, selling, using, or manufacturing the product or process they invented.

Realistically speaking, could any of the dinosaurs regenerated from fossilized DNA in Jurassic Park skirt the law of nature judicial exception or the novelty requirement for a method of acquiring dinosaur DNA?

Yes and No!

In the 1980s, a radical change to laws governing subject matter eligibility occurred. In the strictest sense, Dr. Henry Wu's groundbreaking work at InGen would have fallen within the realm of a judicial exception i.e. law of nature, and therefore be considered patent ineligible. But, the precedential Supreme Court decision of Diamond v. Chakrabarty, 447 U.S. 303 issued June 16th, 1980 made living, man-made micro-organisms patent eligible as a "manufacture" within the meaning of the 1952 Patent Act.[4] This decision would have given InGen counsel and executives the green light to embrace the avant-garde technique of cloning dinosaurs.

In 2013, the US Supreme Court nullified in part the range of patentable material previously allowed by Diamond v. Chakrabarty with the Molecular Pathology v. Myriad Genetics ruling. But, since this would not be relevant for 24 years from InGen's initial discovery, their right to exclusivity would have expired!

Anticipation and Obviousness

What if InGen's "patented dinosaur" technology was a method of extracting DNA from fossilized material as opposed to the animals per se? Would the method be patent-eligible?

Yes (maybe) and No!

In the1980's, DNA extraction was not a novel technique. Isolation of genomic DNA, plasmid DNA, and RNA, while laborious, was regularly performed. If InGen were patenting a specific method of extracting DNA from fossilized material, sequencing and aligning said DNA, supplementing un-interpretable codons with commensurate Xenopus laevis DNA sequence, using said manipulated DNA to asexually fertilize a recipient ovum, and incubating the resulting embryo in a surrogate host until parturition, that might be considered novel, un-obvious, not anticipated by the prior art and therefore patent-eligible.

Description

An issued patent on InGen's dinosaurs would have necessitated that enough information be publically made available so that someone, skilled in the art, could make or use the invention without undue experimentation.[6] Without a detailed description, the USPTO would have rejected Ingen's patent application with a 35 USC 112 rejection. In light of the requisite public disclosure, why would the nefarious Dennis Nedry (Park computer programmer/industrial spy) and Lewis Dodgson (unscrupulous product development chief at a rival company, Biosyn) have needed to steal the technology?[7]. We know all too well how that turned out!

Epilogue

Sharon Begley of STAT has asserted that "[d]e-extinction" efforts are on the horizon[8]. The practical utility of regenerating dinosaurs ... is arguable. As of 2020, one or more of the 15 species of dinosaurs created in the original Jurassic Park could possibly be patent-eligible. An IP expert could reasonably argue that InGen's de-extinct creatures are not exact recreations of those animals that roamed the earth 235 million years ago and represent a totally man-made manufacture. While someone "skilled in the art" could probably find the method of extracting dinosaur DNA from the blood of ancient insects preserved in amber as experimentally flawed, it still makes for a totally enjoyable story 30 years later.

 

[1] Crichton, Michael. Jurassic Park. New York: Ballantine Books, 1990.

[2] USPTO https://www.uspto.gov/about-us/news-updates/us-patent-system-celebrates-212-years via @USPTO

[3] https://en.wikipedia.org/wiki/United_States_patent_law

[4] Diamond, v. Chakrabarty, PhD 447 U.S. 303 (1980) Supreme Court Decided June 16th, 1980 Citations: 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144, 1980 U.S. LEXIS 112

[5] U.S. Supreme Court

ASSOCIATION FOR MOLECULAR PATHOLOGY ET AL. v. MYRIAD GENETICS, INC., ET AL. 12-398

[6] MPEP

[7] "The Science of Jurassic Park and the Lost World" by Rob DeSalle and David Lindley; 1997; Basic Books publisher

[8] Scientists Have Reconstructed the Genome of a Bird Extinct for 700 Years

By Sharon Begley, STAT on February 27, 2018