[Book Review] Intangible Intangibles

http://ipkitten.blogspot.com/2024/08/book-review-intangible-intangibles.html

This is a review of the book, Intangible Intangibles: Patent Law’s Engagement with Dematerialised Subject Matter, by Professor Brad Sherman (University of Queensland). “Dematerialisation” is a term for the decoupling of subject matter from the physical (such as biological materials used by life scientists) and the shift to the immaterial (such as the digital sequence data that take the form of A T C G strings to spell out the genetic code). 

The book argues against the idea that dematerialisation is a uniquely 21st century problem by looking at three situations where US patent law has already dealt with a dematerialised subject matter: 19th century chemical inventions, computer-related inventions in the 1970s, and biological subject matter across the 20th century.

Questioning the “Lagging Behind” of the Law

There is a widespread assumption that the law is condemned to lag behind and react to the developments in science and technology, such that legislators and lawyers are continually trying “to close the gap between an outdated law, an innovative science, and a disruptive technology.”

However, a key aim of the book is to challenge this asymmetrical view of the relationship between law and science. The case studies are used to illustrate how this relationship is more nuanced, especially when the law has to decide whether certain classes of subject matter should be protectable. 

In the debates about IP for software, the book shows that the information technology industry did not have an agreed definition of the subject matter or how it should be protected, so “the industry sought to resolve its own disputes through the law.” In another example, the book shows that when horticulturalists sought protection for plant innovations, the US Congress refused to take these demands seriously until the American Joint Committee on Horticultural Nomenclature achieved greater standardisation of the naming system for plant varieties. In this way, the book highlights that the law can sometimes spur scientific developments, not just respond to them (a point Sherman and this Kat have previously made, the latter in the context of the taxonomy of the Cannabis plant). 

By the same token, Sherman illustrates how genetic science has developed beyond the simplified view of the “central dogma” that assumes each gene encodes for one trait, yet patent law often reflects the simplified view. Sherman demonstrates that some “lagging behind” might not always be a bad thing; indeed, he shows that while patent law may rely on a “hazy” or “loosely defined” view of genes as a scientific object, this is actually helpful because:

… attempting to define a gene too precisely may be self-defeating for the research effort proper; namely, because it risks using language too closely tied to particular experimental practices, which ‘would, by its very specificity, render communication across different experimental contexts effectively impossible’.

Degrees of Dematerialisation

With each of the three case studies, the book shows that “many of the problems created by the intangible have been resolved by resorting to a tangible physical manifestation of the intangible.”

For example, the property rights under the Plant Patent Act of 1930 and the Plant Variety Protection Act of 1970 were treated as being coextensive with the plant as a whole, limited to its external surface (i.e. phenotypic traits and characteristics rather than genetics), and only protected individual plant varieties. This allowed the law to demarcate and protect the otherwise fluid and uncertain subject matter. 

The stabilisation of the subject matter was also achieved by requiring deposit of physical specimens to obtain plant variety protection, as well as for utility patent applicants to meet the requirement for enabling disclosure. In this way, for plant-based innovations, “the tangible is never far from the (sub)surface.”

For these and other reasons, Sherman cautions against the way plants have been grouped together with animals, microorganisms, and other organisms under the rubric of “biological subject matter,” which has meant that the particularity of plant-based molecular subject matter has often been overlooked.

Comments

The book provides a timely intervention into the debates about dematerialisation. It challenges many prevailing assumptions about the history of US patent law and its response to new subject matter. Given the time of year, it’s worth mentioning that although the book is rich with historical details and images from the archives, the paperback is a slim volume that fits nicely into carry-on luggage – this Kat can attest that the book makes for some fascinating in-flight reading!

The e-book was published in open access format and is available to read and download for free here. The paperback can be purchased from the Cambridge University Press website.

Details

Published: 2024

Format: Paperback, Ebook

Extent: 304 pages

ISBN: 9781009479608

Publisher: Cambridge University Press

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