Lessons from Laboratory Corp. of America Holdings V. Metabolite Laboratories, Inc.

This article provides reflections on the scope of patentable subject matter, using the Supreme Court\u27s recent consideration of Laboratory Corp. of America Holdings v. Metabolite Laboratories,Inc. as a springboard for discussion. A brief introduction to the case and the current standard of patentable subject matter are provided as a backdrop for discussion of the role of patentable subject matter in the overall scheme of patentability and patent enforcement. In addition, this article addresses potential repercussions of the case within the judicial and legislative arenas. This article concludes byoffering some broad-based issues for consideration, including both domestic and international implications

Harmonization Without Consensus: Critical Reflections on Drafting a Substantive Patent Law Treaty

In this Article, we contend that the World Intellectual Property Organization\u27s proposed Substantive Patent Law Treaty (SPLT) is premature. Developing countries are struggling to adjust to the heightened standards of intellectual property protection required by the TRIPS Agreement of 1994. With TRIPS, at least, these countries obtained side payments (in the form of trade concessions) to offset the rising costs of knowledge products. A free-standing instrument, such as the SPLT, would shrink the remaining flexibilities in the TRIPS Agreement with no side payments and no concessions to the catch-up strategies of developing countries at different stages of technological advancement. More controversially, we argue that a deep harmonization would boomerang against even its developed country promoters by creating more problems than it would solve. There is no vision of a properly functioning patent system for the developed world that commands even the appearance of a consensus. The evidence shows, instead, that the worldwide intellectual property system has entered a brave new scientific epoch, in which experts have only tentative, divergent ideas about how best to treat a daunting array of new technologies. The proposals for reconciling the needs of different sectors, such as information technology and biotechnology, pose hard, unresolved issues at a time when the costs of litigation are rising at the expense of profits from innovation. These difficulties are compounded by the tendency of universities to push patenting up stream, generating new rights to core methodologies and research tools. As new approaches to new technologies emerge in different jurisdictions, there is a need to gather empirical evidence to determine which, if any, of these still experimental solutions are preferable over time. Our argument need not foreclose other less intrusive options and measures surveyed in the Article that can reduce the costs of delaying harmonization. However, the international community should not rush to freeze legal obligations regarding the protection of intellectual property. It should wait until economists and policymakers better understand the dynamics of innovation and the role that patent rights play in promoting progress and until there are mechanisms in place to keep international obligations responsive to developments in science, technology, and the organization of the creative community

Software Patent Protection Under the European Patent Convention

The primary objective of the thesis will be to focus on patent protection of software under the European Patent Convention, by analysing the different approaches that the European Patent Office has taken into consideration since the mid-1980s. These approaches are rooted in the different decisions that emanate from the Technical Boards of Appeal of the European Patent Office. The thesis will examine the most relevant decisions illustrating the juridical tendencies and fundaments that have been utilized to decide over the patentability of computer programs. The analysis will conclude with the latest approach taken by the Technical Board of the European Patent Office. The study will examine the patentability requirements of inventions in general established within the European Patent Convention. Subsequently, a case law analysis will be performed of relevant decisions taken by the Technical Boards of Appeal on the patentability of computer programs. Sources for carrying out this research such as case law, legislation, specialized legal commentary; journals and books will serve in this matter. The present study sustains that computer programs may be patented as long as they comply with all the general requirements of an invention prescribed under the European Patent Convention together with an inherent condition established by case law called the technical character requirement. Nevertheless, due to the fact that the Technical Boards of Appeal are not bound by previous case law, the current position could keep evolving as it relies on the political stance the European Patent Office has on patentability of computer programs

The Access to Knowledge Mobilization and the New Politics of Intellectual Property

Intellectual property law was once an arcane subject. Today it is at the center of some of the most highly charged political contests of our time. In recent years, college students, subsistence farmers, AIDS activists, genomic scientists, and free-software programmers have mobilized to challenge the contours of intellectual property (IP) law. Very recently, some from these groups have begun to develop a shared critique under the umbrella of access to knowledge (A2K). Existing accounts of the political economy of the field of IP have suggested that such a mobilization was unlikely. This Article takes the emergence of the A2K mobilization as an opportunity to develop a richer and less deterministic account of the contemporary politics of IP. It draws upon frame mobilization literature, which illuminates the role that acts of interpretation play in instigating, promoting, and legitimating collective action. The frame-analytic perspective teaches that before a group can act it must develop an account of its interests and theorize how to advance these interests. These acts of interpretation are both socially mediated and contingent. Ideas can be a resource for those engaged in mobilization, but one that is not fully in their control. Frames thus can lay the scaffolding for a countermovement even as they pave the way for a movement\u27s success. Law is a key location for framing conflicts because it provides groups with symbolic resources for framing, and because groups struggle within the field of law to gain control over law\u27s normative and instrumental benefits. Law thus exerts a gravitational pull on framing processes. Engagement with law can influence a group\u27s architecture, discourse, and strategies, and can also create areas of overlapping agreement and as importantly-a language of common disagreement between opposing groups. The Article closes by suggesting some implications of this point, which should be of interest to those who design legal institutions and who engage in social mobilization. Most intriguing, perhaps, is the role it suggests that law may play in the creation of global publics and polities

Law and economics of employee inventions

У дисертацији аутор настоји да одговори на питање да ли право на патентну заштиту и привредну употребу проналаска који је створен у радном односу треба признати послодавцу или проналазачу и под којим условима. Повод за истраживање пружају бројни радови у којима се заговара боља правна заштита проналазача и законска решења у упоредном праву која признају послодавцу право на патентну заштиту под различитим условима. Како би дошао до одговора, аутор анализира историјски развој института патентне заштите и релевантна законска решења из упоредних патентних система, при чему поред правних метода примењује и економске методе и моделе. На основу истраживања, аутор закључује да би право на патентну заштиту проналаска створеног у радном односу требало признати послодавцу, под обавезујућим условом да усвоји одговарајући интерни систем подстицаја, који би проналазачима омогућио да преузимају део ризика (и користи од) истраживања и развоја. На тај начин би били створени бољи подстицаји за улагање у истраживање и развој и за ефикасније обављање истраживачких делатности код послодавца, што би у крајњем ефекту могло позитивно да утиче на технолошки и економски развој друштва.In the dissertation, the author tries to answer the question of whether the right to patent protection and commercial exploitation of employee inventions should be granted to employers or employed inventors, and under which conditions. The reason for the research lies within numerous papers advocating stronger legal protection of employed inventors, and comparative legal systems granting the right to patent protection to employers under different conditions. In order to provide an answer, the author analyzes the historical development of patent protection, and comparative legal solutions in modern patent systems, applying the legal methods, and economics methods and models. Based on the conducted analysis, the author concludes that the right to patent protection of employee inventions should be granted to an employer, under the mandatory condition to enact adequate internal incentive system for employed inventors, which would enable inventors to take a share of research and development risk (and profit). In that way, one could create better incentives for investments in research and development, and for more efficient conduct of scientific and research activities within employers’ organization, which could contribute to the technological and economic development of a society

Revisiting public health emergency in international law: a precautionary approach

This work develops a means to encourage states to take advantage of the flexibilities of compulsory licensing in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) which promotes access to medicines in a public health emergency. In pursuing this solution, the precautionary approach (PA) and the structure of risk analysis have been adopted as a means to build a workable reading of TRIPS and to help states embody the flexibilities of intellectual property (IP). This work argues for a PA reading of TRIPS and that states have the precautionary entitlements to determine an appropriate level of health protection from the perspective of “State responsibility” in international law. A philosophical review is conducted followed by the examination of existing international legal instruments including the WTO Agreement on the Application of Sanitary and Phytosanitary Measures, the WHO International Health Regulations, the Codex Alimentarius, and the Cartagena Protocol on Biosafety. The PA has been found to have a pervasive influence on risk regulation in international law, yet the application is fraught with fragmentations in different legal regimes. In order to reach a harmonious interpretation and application of the PA in the WTO, the legal status of PAs of different WTO instruments have been analysed. Further, a comparative study on PAs in terms of legal status in the exemptions of the WTO and TRIPS obligations has been proposed. The political and moral basis for compulsory licencing in a public health emergency has been bolstered through the interpretation and the creation of legal status of the PA in WTO/TRIPS law

The Legal regulation of interoperability in an oligopolistic market.

3D CAD (Computer Aided Design) software is widely used in engineering industries to design products and manage their lifecycles. It is crucial to the economy as it records vital design information and knowhow on all engineered products in the developed and developing worlds. The industry is oligopolistic with few suppliers and while efforts have been made to standardise data transfer formats by the promulgation of standards there are formidable interoperability issues. Once users have purchased a particular brand of software they are essentially “locked in” and the industry has all the elements associated with a lack of interoperability, namely network effects, lock-in, and proprietary software and interfaces. Intellectual Property Rights in software are granted to incentivise innovation but cause a lack of interoperability. The ideas and principles which underlie software interfaces are not protected by copyright but there is no such exemption for patents. Interfaces are similar to standards and their indirect effect amplifies their impact and value and distorts the intended intellectual property protection. As the machine code which is distributed to users is not readable, reverse engineering is permitted to enable interoperability, subject to restrictions, including prohibiting the sharing of interface specifications, which is tantamount to making the information a statutory trade secret. Using legal doctrinal research of primary and secondary materials including case law, previous research alongside industry documents and interviews with experts in the industry, this thesis makes original and significant contributions to knowledge. Firstly, the research provides an assessment of the legal regulation of lock-in in an oligopolistic market and identifies the inability of competition law to provide a remedy. It had previously been assumed that competition law would provide a remedy of last resort to require disclosure of interface information. Secondly, considering the indirect function of control of interfaces the justification for patents in interface standards is critically evaluated. Thirdly, with reference to the normative framework of balancing control and openness of interfaces, the ability of the studied market to achieve an optimum balance is evaluated, taking account of the impact of market conditions including the lock-in of the users’ proprietary data, the software’s functional nature and the need for data integrity. Fourthly, with reference to this research and intellectual property law principles and practice existing proposals are critically evaluated including the reduction of the term of protection which will harm vertical interoperability of complementary software. The argument that the time and cost of reverse engineering has a purpose in protecting first comers is countered and it is proposed that reverse engineering of interfaces should be easy and effective. Recommendations are made to improve the dissemination of interface information to allow markets to move towards an optimum balance with minimum regulatory interference. The regulation of interoperability is a balancing act between control by rightsholders and openness of interfaces and this thesis builds on existing research to refine and expand the criteria that identifies the ‘pivot’. Recommendations with least intervention and encouraging efficient market solutions are made with an emphasis on improving reverse engineering’s effectiveness, particularly in the openness and dissemination of interface specifications