The Honorable Orrin G. Hatch

January 16, 2004

The Honorable Orrin G. Hatch

Chairman, Committee on the Judiciary

United States Senate

Washington, D.C. 20510

Dear Mr. Chairman:

On behalf of the American Bar Association Section of Intellectual Property Law (“the IP Law Section”), I write to express our opposition to a provision in the Conference Report on H.R. 2673, the Consolidated Appropriations Act, 2004, that would prohibit the use of funds appropriated by the Act to issue patents on claims directed to or encompassing a human organism. Popularly known and referred to herein as the “Weldon amendment,” the provision originated as a House amendment to H.R. 2799, the Departments of Commerce, Justice, and State, the Judiciary, and related agencies Appropriations Act for the fiscal year ending September 30, 2004. It now appears as section 634 of Division B of the Conference Report on H.R. 2673, Consolidated Appropriations Act, 2004. The Conference Report has been adopted in the House, and will be the first order of business when the Senate returns for the 2nd Session of the 108th Congress on January 20.

The views expressed in this letter are those of the Section of Intellectual Property Law. They have not been submitted to nor approved by the ABA House of Delegates or Board of Governors and should not, therefore, be construed as representing policy of the American Bar Association.

The IP Law Section opposes the Weldon amendment on both procedural and substantive grounds. We oppose the amendment on procedural grounds because we do not believe that patent laws should be modified through indirect means such as the funding restrictions contained in the Weldon amendment. Changes to basic principles of patent law, such as those in the Weldon amendment restricting patentable subject matter, should only be adopted after hearings and other appropriate consideration by the Senate and House committees with jurisdiction and subject matter expertise, namely the Senate and House Judiciary Committees. The truncated, unsuccessful 11th hour attempts on the House floor and in the Conference Committee to address issues of ambiguity and possible unintended over breadth of the Weldon amendment underscore the shortcomings and dangers of proceeding other than through regular legislative order on such matters.

We also oppose the Weldon amendment on substantive grounds, because we do believe that the patent law should not be used to for the purpose of discouraging or prohibiting activity that may be regarded as objectionable on grounds unrelated to patent law. The scope of patentable subject matter is, and should remain, a determination to be

made by application of universal principles spelled out in section 101 of title 35, U.S. Code. A patent merely gives the patent owner the right to exclude others from practicing the patented invention, and does not give the patent owner--or anyone else--any affirmative right to practice the patented invention.

In June of 2002, when an amendment similar to the Weldon amendment was proposed in the Senate, you expressed agreement with patent experts “who do not believe that changing the patent law is the appropriate vehicle for exercising governmental control over the multitude of issues relating to cloning. . . . It would be a big mistake to leave the important broad societal moral, ethical, and public health issues to PTO experts applying technical patent laws.”

We believe that the principles that you articulated at that time are applicable to the current amendment, and that the scope of patentable subject matter should not be redefined, either directly by permanent legislation or indirectly through fund restrictions such as the Weldon amendment, to regulate conduct that should be governed by laws other than patent laws.

We recognize that, given the parliamentary circumstances under which the Conference Report will be considered, the opportunity for meaningful opposition to the Weldon amendment is very limited at this time. We nonetheless wanted you to know of our concerns and opposition, especially in view of the fact that the Weldon amendment is a temporary measure, and the issues involved may be presented again in the near future.

Respectfully submitted,

Robert W. Sacoff

Chair

2