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Faculty Spotlight: Joshua Sarnoff

Joshua Sarnoff
Joshua Sarnoff is a professor at DePaul University College of Law, the 2018 recipient of the DePaul Spirit of Inquiry Award, and the Thomas A. Edison Distinguished Scholar at the US Patent and Trademark Office from 2014-2015. In June 2019, he testified before the Intellectual Property Subcommittee of the Senate Judiciary Committee.

Q. Can you discuss testifying in front of Congress?

I was invited to testify before the Intellectual Property Subcommittee of the Judiciary Committee of the US Senate to address a pending draft bill to reform the patent law “subject matter eligibility" doctrine. (Video—beginning here around 2:09:30—and written testimony— available here—and responses to following questions from Senators Blumenthal and Hirono.) The bill would have amended Section 101 of the Patent Act, eliminating the nature of any "new" creative advance from consideration of what kinds of things can be patented. This is a topic on which I have spent decades writing. It was flattering to be asked to testify in person and to share my views, particularly on what I thought was wrong with the bill and how it might be fixed.

Q. Why did Congress want to amend the Patent Act?

The bill was intended to respond to uncertainty created by decisions of the US Supreme Court and US Court of Appeals for the Federal Circuit that have reaffirmed historic interpretations of the limits of what the Patent Act considers to be an eligible “invention."  Substantial criticism has resulted from inconsistent lower court applications of the current eligibility standard, as well as from concerns that the current standards eliminate financial incentives to make scientific discoveries and to develop their practical applications. The bill would have replaced the current eligibility standards with a new definition of the patent “utility" requirement, authorizing patents for any specific and practical application in any “field of technology."  If enacted, it would have dramatically expanded the kinds of things that can be considered patent-eligible inventions, while recreating uncertainty when applying the new definition of “useful." 

Q. What was your view?

In my testimony, I emphasized the “root causes" of the legal uncertainty that the draft bill was designed to address. The principle root cause in my opinion was the lack of legislative specificity, which Congress can easily control.  But doing so requires generating a legislative consensus for enacting more specific language. So far, that consensus has not developed. The secondary root cause was the inconsistency of judicial decisions interpreting the legislation and the failure of judges to follow or to explicitly repeal prior precedents; this second problem will be much more difficult to fix.

Perhaps the most important part of my testimony was explaining why the legislation should not seek to provide private property rights (i.e., patents) for natural discoveries, scientific principles and abstract ideas. All of these discoveries should be free for everyone to use. My published academic work has explained why such pre-existing things and fundamental concepts were historically viewed as God-given for all humanity, and that patenting them would have been seen as a religious sin and as unjustly enriching the discoverer. I also pointed out why patents should not be authorized for claimed inventions applying new and creative scientific or natural discoveries without providing significant additional creativity in those applications, and why such patents might be held unconstitutional. It was particularly rewarding to hear proponents of the legislation make public statements soon after the session that were responsive to this testimony, indicating that it was not their intent to authorize patents on science, nature and abstract ideas. 

Q. Was this your first time testifying in front of Congress?

Yes, it was the first time I have testified before Congress. Writing the testimony was not too different from pro bono and consulting work that I have previously engaged in—including drafting a legislative white paper on design patents and repair rights, and filing amicus briefs on behalf of law professors and non-profit organizations on many utility patent doctrines (available here). But I felt much more anxious about actually speaking with senators and being recorded for the general public's viewing. I also had to boil down dozens of pages of written testimony into five minutes of oral presentation and to modify my prepared presentation in light of the comments of prior speakers. Again, it was particularly rewarding when the committee chair asked my academic colleagues on the panel if they had any disagreements with the points that I had made.

Q. What are you currently working on?

Currently, I am focused on the need to adopt laws creating automatic exceptions to intellectual property rights for emergency situations, such as the COVID-19 pandemic. Such automatic exceptions could further enable development of vaccines and treatments and would authorize distributed production of needed equipment such as ventilators and repair parts to address supply chain problems. International calls already have been made for greater openness in scientific discovery and the sharing of data (see UNESCO article), which returns to the main theme of my testimony of keeping scientific discoveries free from patent rights. Similarly, legal efforts have recently been adopted to facilitate voluntary waivers of intellectual property rights so as to expand emergency responses (see Open COVID pledge).  But automatic exceptions and more widespread implementation are needed, through national and international measures specifically designed for such emergencies.

I also am the editor of the Research Handbook on Intellectual Property and Climate Change, and my recent academic work has emphasized the intersection of intellectual property law, health law and environmental law. I am continuing earlier work on innovation funding choices to develop climate change-related technologies, which will be needed whenever we get to our new normal. Finally, I hope to return soon to various projects that address language definition theory and analogical reasoning, to better explain fundamental principles of legal analysis for law students and to provide insights for patent claim interpretation and administrative law doctrines.​​