Predicting the Future
Kayton, a fiery law professor who founded a business to train patent lawyers called Patent Resources Group, foretold that advances in molecular biology would soon give rise to technologies that would spawn a whole new sector of human activity.
Ever outspoken, Kayton prophesied medical developments that would lead to human immortality, while urging his off-Broadway audience of enthralled patent practitioners to brush up on, not your Shakespeare, but biochemistry and genetics. Because, as he accurately predicted, patent lawyers versed in that subject matter were destined to perform a pivotal role in the upcoming play.
In the aftermath of my report in GEN of Kayton’s 1981 seminar, Liebert’s acorn was popping. She suggested that we generate a legal journal to chronicle developments in this field. As the term “genetic engineering” was becoming more focused on recombinant DNA, and it seemed that the broader term of “biotechnology” was entering the discourse, we chose to identify the subject matter as “biotechnology law,” probably the first time those two words were juxtaposed in print.
At the time, we conceived a newsletter, something like the Antitrust & Trade Regulation Report I was regularly reading. We named the baby Biotechnology Law Report (BLR), which began publication at the beginning of 1982. Mary Ann instructed me to assemble an Editorial Board for BLR, and I promptly started asking colleagues to participate.
Stephen M. Sammut, who’d attended Kayton’s seminar, signed on to manage the first issues with me. One of the first lawyers on the editorial board was Geoffrey M. Karny, who had contributed the legal section of the April 1981 study published by an arm of Congress, the Office of Technology Assessment, called “Impacts of Applied Genetics: Micro-Organisms, Plants & Animals.”
Another who graced us on the editorial board with his presence from the outset was The Honorable Giles Sutherland Rich (1904–1999). Over the years, he joined us at gatherings in Washington, D.C., and stayed in touch until his passing at age 95, then the oldest living federal judge.
As a member of the Court of Customs and Patent Appeals, Judge Rich had authored, in 1978, the initial appellate decision affirming the patent-eligibility of Dr. Chakrabarty’s organism. His written opinion paved the way to the favorable decision by the Supreme Court two years later, which quoted legislative history to say that Congress had intended patentable subject matter to “include anything under the sun that is made by man.”
Before his appointment to the bench, Judge Rich had practiced patent law in New York City. As president of the New York Patent Law Association, he and chief patent examiner P.J. Federico famously drafted the major revision of U.S. patent law that was enacted by Congress in 1952. Among its innovations was a re-statement of the American test of what others have called “inventive height.”
The 1952 patent act he is credited with co-authoring provides that a person be entitled to a patent for a novel and useful invention unless: “the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”
Schooled in the tension between antitrust principles favoring free and open competition and laws promoting protection of intellectual property, I was aware that a purpose for that provision was to overturn the unfortunate statement by the Supreme Court in 1941 in the Cuno Engineering case that a patentable invention arises from a “flash of creative genius.”
The goal was to clarify that the patent system would protect inventions of a variety of “heights” even if enforcement of the patent would seem like a “monopoly” by preventing a second adopter of the invention from operating freely.