Legal but Unacceptable: Pallin v. Singer and Physician Patenting Norms
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Description
In intellectual property discourse, the edge tends to be defined by disputes between producers and consumers or between upstream and downstream innovators. This chapter tells a different kind of story, about the edge between the patent-based innovation system and a user innovator community governed by norms of reputation and sharing. In this story, the user innovator community is the medical profession. In the mid-1990s, at the height of a period of expansive patent rights, Dr. Samuel Pallin patented an improvement to cataract surgery procedure and sought to license it to other eye surgeons in return for royalty payments. One of those eye surgeons was Dr. Jack Singer. Singer responded to the royalty demand not only by refusing to pay it, but by spearheading what eventually became a political movement against medical procedure patents. Beginning in 1994, physicians lobbied Congress to redraw the line around patentable subject matter so as to exclude medical procedures. Though they did not achieve that objective, they succeeded in convincing Congress to pass 35 U.S.C. § 287(c) in 1997. § 287(c) eliminates remedies against physicians for infringement of many medical procedure patent claims. Though physician inventors routinely patent medical devices, opposition to patents on medical procedures and medical diagnostic methods holds strong. This chapter examines that opposition through the lens of user innovation. User innovators invent and improve technologies for their own use, rather than to license or sell them to others. Examples of user innovations include improved manufacturing processes, certain types of software, sports equipment, scientific research tools, and many business methods and service improvements. User innovation succeeds because it depend on users’ superior, and “sticky,” knowledge of unmet needs and the ways that technologies perform on the ground. Because of their shared interests, users of a particular type of technology often form communities in which the norm is to share information about problems with current technology, suggestions for improvements, innovations they have made, and critiques of those innovations. Patenting is generally eschewed by these communities and innovation is rewarded with reputation. Physicians who devise new medical procedures, diagnostic tests, medical devices, surgical instruments, and the like are also user innovators. This chapter views the story of Pallin v. Singer and the physician movement that led to the passage of § 287(c) as a narrative of user innovator community norms.
Source Publication
Intellectual Property at the Edge: The Contested Contours of IP
Source Editors/Authors
Rochelle Cooper Dreyfuss, Jane C. Ginsburg
Publication Date
2014
Recommended Citation
Strandburg, Katherine J., "Legal but Unacceptable: Pallin v. Singer and Physician Patenting Norms" (2014). Faculty Chapters. 1673.
https://gretchen.law.nyu.edu/fac-chapt/1673
