Some Reflections on Method and Policy in the Crowded House of European Patent Law and Their Implications for India

The patent regimes of several countries face an interplay of different obligations today which has made it difficult to discern the methodology adopted in answering questions of patentability. Consider India, where the regime witnesses the tussle between obligations under domestic legislation and Fundamental Rights, and those imposed by the Agreement on Trade Related Aspects of Intellectual Property Rights. Harmonization of these competing obligations raises important questions of an appropriate methodology, the absence of which would reduce the intricate complexities into an apparent jumble. In this article, the author takes up this issue in the European context, specifically positing her arguments against the backdrop of the debate surrounding the exclusion of natural phenomenon from patentability in Europe. It is argued that the European setting witnesses a lack of an appropriate methodology to determine the limits of patent law, which has rendered the inevitable convergence around some basic principles rather unsatisfactory and incoherent

Inherent patentability in Australian, United Kingdom and EPC law : a history

The purpose of this Thesis is to trace the history of judicial constructions of inherent patentability in the patent systems of Australia, the United Kingdom and, by operation of the Convention on the Grant of European Patents (`EPC'), the European Patent Organization. Inherently patentable subject matter is subject matter the characteristics of which are considered at law to make it inherently suitable for patent protection. Historically, the basic subject matter of patent protection has been the invention, and the concept of inherent patentability has been understood with reference to the distinction between inventions on one hand, and discoveries and other inherently noninventive subject matter on the other. The same distinction applies to varying degrees in contemporary Australian, United Kingdom, and EPC law by virtue of the express requirement in each of those jurisdictions for an invention that is patentable. It should be emphasised, however, that whilst the term `invention' has long been used to denote inherently patentable subject matter, the relevant legal concept is inherent patentability, and it is the development of that concept that has led legal understandings of the term `invention' rather than vice versa. The historical analysis of inherent patentability undertaken in this Thesis is presented in two Parts. The focus of the first Part (Chapters 1-3) is on Anglo-Australian law, meaning the law of the United Kingdom prior to its adoption of the EPC in 1977 and Australian law to date. The focus of the second Part (Chapters 4-6) is on the law of the European Patent Organization and the United Kingdom since its adoption of the EPC in 1977. In Chapter 1 I consider the origins of the common law invention and its development until 1623, when the Statute of Monopolies 1623 (Eng) was enacted and the foundations of the modern Australian and United Kingdom patent systems established. In Chapters 2 and 3 I analyze the development of inherent patentability within the Anglo-Australian patent system from commencement of the Statute of Monopolies to the present. In Chapter 4 I consider the origins of the model of inherent patentability adopted by the Contracting States of the EPC (including the United Kingdom) in the mid-1970s, and in Chapters 5 and 6 I analyze the development of inherent patentability in the hands of the United Kingdom courts and the European Patent Office. My purpose in writing this Thesis has not been to argue the case for the contemporary patent system's accommodation (or otherwise) of one or more classes of subject matter, but rather to explore and analyse the evolution of the threshold requirement of patentability in each of the jurisdictions considered. To that end I have focused primarily on the (reported and unreported) decisions of the courts, as well as selective decisions of patent administrators. In the case of the EPC I have relied on the decisions of the Boards of Appeal, with additional reference to decisions of the first instance departments of the European Patent Office where appropriate. I have also relied on background legislative material and related historical sources, and on the work of other academics in the area. A bibliography of the sources I have used appears after the main text. On matters of style and citation the Thesis complies with the Australian Guide to Legal Citation, with additional guidance, where necessary, from the 17th edition of The Bluebook: A Uniform System of Citation. A final point should be made regarding my citation of cases in Chapter 2. For reasons of brevity I have given only one citation for each of the cases referred to in that Chapter. Despite this, many of the cases are reported in several different nominate (that is, pre-1865 `named' English) reports, and many of those reports have since been reprinted in the English Reports or All England Reports Reprint and, most usefully, in the 11 volumes of Hayward's Patent Cases 1800-1883 (1987). With the assistance of those volumes I have compiled a more complete list of citations for the cases relied on, which is included in the bibliography

Some Reflections on Method and Policy in the Crowded House of European Patent Law and their Implications for India

The patent regimes of several countries face an interplay of different obligations today which has made it difficult to discern the methodology adopted in answering questions of patentability. Consider India, where the regime witnesses the tussle between obligations under domestic legislation and Fundamental Rights, and those imposed by the Agreement on Trade Related Aspects of Intellectual Property Rights. Harmonization of these competing obligations raises important questions of an appropriate methodology, the absence of which would reduce the intricate complexities into an apparent jumble. In this article, the author takes up this issue in the European context, specifically positing her arguments against the backdrop of the debate surrounding the exclusion of natural phenomenon from patentability in Europe. It is argued that the European setting witnesses a lack of an appropriate methodology to determine the limits of patent law, which has rendered the inevitable convergence around some basic principles rather unsatisfactory and incoherent

Copyright and its Categories of Original Works

In this article, the categories of literary, dramatic, musical and artistic (LDMA) works in which copyright subsists are considered, and an argument made that the legislature's division of protected works into categories is appropriate given the psychology of art appreciation, and the fact that in order to perceive a work qua work one must perceive it in relation to a category of work. Nonetheless, an argument is also made that the statutory definitions of LDMA works suffer from the defects of formalist theory. Those defects are outlined, and an alternative theory of works proposed, drawing on the scholarship of art theorist Kendall Walton and the intentional, historical view of the work developed in a recent publication (J Pila, 'An Intentional View of the Copyright Work' (2008) 71 MLR 535-58). According to that theory, LDMA works are constituted in part by their properties of form and in part by the history of their individual production. Consistent with this, the statutory categories of work are cast as denoting authorial traditions: evolving practices of LDMA expression that exist and are experienced in a particular social context. In addition to its general explanatory and normative value for copyright, this theory has specific implications for the legislature's expression of the categories of works in which copyright subsists. © The Author 2010. Published by Oxford University Press. All rights reserved. For permissions, please e-mail: [email protected]

'Sewing the Fly Buttons on the Statute': Employee Inventions and the Employment Context

Section 39(1) of the Patents Act 1977 governs the ownership of inventions devised by employees in the course of their employment. Introduced 'to codify in a few lines the accumulated common law experience' prior to 1977, it does not expressly differentiate between employment fields, and has been widely assumed to apply indiscriminately, without regard to the particular context of employment. The purpose of this article is to revisit that assumption. In the argument made, section 39(1) was built around a private sector paradigm, the courts' departure from which is supported by a 'rational reason' in the Shanks v Unilever plc [2010] EWCA Civ 1283, [2011] RPC 12 sense. If accepted, such an argument would open the way to the kind of reasoning adopted by the Federal Court of Australia in University of Western Australia v Gray (2009) 179 FCR 346, where the nature of academic employment was held to require that inventions devised by academics be treated differently from those devised by their corporate counterparts. It would also enable the courts to acknowledge the special issues raised by the recognition of exclusionary rights of 'property' in respect of academic and professional inventions, the possibility of morality- and policy-based limits on such rights and the inappropriateness and undesirability of an ownership regime based on a paradigm in which not all employment relationships can be readily or satisfactorily accommodated. Such considerations have particular weight if that paradigm is to become the means for 'sewing the fly buttons on' a statute regarded by post-1977 courts as having been poorly drafted, as it raises the risk of the common law principles which section 39(1) was intended to enshrine becoming subverted by parliamentary caprice. © The Author 2012. Published by Oxford University Press. All rights reserved

The invention of an investment incentive for pharmaceutical invention

Pharmaceutical drugs are often hailed as the poster child for the proposition that patents foster accelerated rates of innovation. This sentiment stems, in large part, from the significantly high research and development (R&amp;D;) costs endemic to the pharmaceutical sector. I argue that if the role of the patent regime is one of fostering higher amounts of investment in the R&amp;D; process, it is better served by a direct investment protection regime, where the protection does not depend upon whether or not the underlying idea behind the drug is “new” and “inventive”, the two central tenets of patent law. Rather, any drug that successfully makes it past the regulatory filter ought to be entitled to protection, since its discovery and development entail significant investment and risk. Owing to the inadequacy of the current patent regime in appropriately protecting intensive pharmaceutical R&amp;D; investments from free-riders, I propose a comprehensive investment protection regime that protects all the investment costs incurred during the drug discovery and development process. Though similar to existing data protection regimes in some respects, it differs in others. Firstly, it enables a recovery of all R&amp;D; costs, and not only costs associated with clinical trials. Secondly, unlike patents and data exclusivity which offer uniform periods of protection, it rewards investments in a proportionate manner, wherein drug originators are entitled to protection against free-riders only until such time as they recoup their specific investments and earn a rate of return on investment that is dependent on the health value of the drug. Given that a pure market exclusivity based investment protection regime is likely to foster excessive pricing and subject the market to the dictates of a single firm, I advocate a compensatory liability model based on a novel cost sharing methodology, where follow-on entrants are free to manufacture the drug, but must pay a reasonable amount of compensation to the originator.</p