(Boston, 03/17/10) New England Law | Boston: A pharmaceutical company, seeking to cure a deadly disease, defines and carries out a research program that scientists agree has a reasonable expectation of success. After a major financial investment and years of effort, the research program yields a marketable product. Yet because of federal patent laws, the firm might not be able to profit from its discovery.
That’s because of current patent law; for an invention to be patentable, its subject matter cannot be “obvious.” According to the U.S. Court of Appeals for the Federal Circuit, the legal standard for obviousness requires a “reasonable expectation of success.” Given the scenario above, the pharmaceutical product would likely be deemed obvious—and unpatentable—providing little incentive for the firm to invest in what had looked like a reasonable research program.
Julie Gottselig ’10 explored this conundrum in a paper that won the 2009 Boston Patent Law Association Writing Competition. Gottselig reviewed the history leading up to the current obviousness standard and recommended what she believes to be a better alternative; she wrote the paper for Current Issues in Patent Law, taught by Professor Eileen Herlihy, codirector of the law school’s Intellectual Property Institute.
Gottselig, who plans to be a patent attorney, questions the current standard, explaining, “I don’t think it really makes sense because it suggests that only unreasonable or serendipitous research deserves a patent.” She instead prefers an earlier standard that called for inventions to “logically have a high probability of success” rather than a “reasonable expectation of success” in order to be deemed obvious. “This would make more sense in terms of public policy by rewarding reasonable yet risky research with a patent incentive,” she says.
Gottselig has more than a strictly academic interest in scientific research. After receiving her Ph.D. in neuroscience, she did postdoctoral work at Brigham and Women’s Hospital, Harvard Medical School, and the University of Zurich. Gottselig passed the Patent Bar Exam in 2007 and is registered to practice before the U.S. Patent and Trademark Office.