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Patent Registration And Subject Matter Notes

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OVERVIEW Development 1624 Statute of MonopoliesAllowed monopoly rights over "manner of new manufactures" for 14 years Codification of past practice in allowing for monopolies

Patents, Designs and Trade Marks Act 1883Gave effect to Paris Convention 1883

Patents Act 1977After much piecemeal reform, this Act implemented the European Patent Convention 1973

CURRENT SITUATION Patent is a time-limited (usually 20 years) exclusive right to restrict the trade and use of ideas and information, incorporated in a qualifying product or processInitially lasts for 4 years but can be extended up to 20 Can be enforced against ALL who use the invention o Much stronger than copyright: works against independent creators and not just copiers

NATIONAL ROUTE-

UK national patent can be granted by UK IPO on application Based on the criteria in PA 1977 o PA 1977 s130(7): Certain provisions are framed "as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention" o Lord Neuberger in HGS v Eli Lilly (2011): Both the EPO and national courts are applying the same principles from the EPC
? If the EPO decides that a patent is invalid: "that is the end of the issue"
? If the EPO decides that a patent is valid, the national court can still hold it invalid within its jurisdiction
? The conclusions of the EPO and national courts need not be the same because of different evidence or arguments or evaluations
? EPO decisions are not effectively binding on national courts, but should be applied where consistent Appeals go to the Commissioner for Patents then the Courts

EUROPEAN ROUTEEPO can grant a bundle of national patents o Based on the criteria under the EPC 1973
? The Convention is an intergovernmental treaty, NOT part of the EC/EU

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? Centralised opposition proceedings can be brought for 9 months
? EPC was revised in 2000 o Appeals go to the relevant Board of Appeal o National courts can revoke the national patent granted NOTE: There is NO community patent yet (unlike with trade marks) o Community Patent Convention was signed in 1975 but never came into force o Using the enhanced cooperation procedure, 2 regulations were adopted in 2012
? Creating a European patent with unitary effect
? Establishing a language regime applicable to the unitary patent o There was also an international agreement in 2013 regarding the setting up of a Unified Patent Court
? Not yet ratified (and not signed by Spain and Italy) o ISSUES
? Unclear how this relates to the CJEU
? 3 official languages so there is still translation cost
? Still need to translate further in infringement proeedings
? Results in 3 systems: national patents, bundle of patents (European patents), unitary patent (for signatories)
? Davies/Aplin: The system is not "coherent and efficient" Supplementary Protection Certification Regulation (SPC Regulation 1992) o Allows for patented medicinal products which have regulatory approval to be protected for a maximum of 5 years after the 20 year patent expires o Used where marketing has been delayed by the need to obtain regulatory approval Biotechnology Directive o Very controversial directive, finally adopted in 1998 o Netherlands brought annulment action but this was rejected in 2001 o Implemented in 21 Member States by 2005 o Harmonises the rules on patents for biotechnological inventions
? E.g. requirements and exclusions
? Compulsory licensing procedures

JUSTIFICATIONS Natural rights--

Lockean view: a person should own what is produced by his own labour o Provided that there is enough that is good left for others (equality), and that one does not take more than one can use (no wastage) ISSUE (Chevalier): An idea can belong to an unlimited number of persons o Unlike literary or artistic works which have "decided character of individuality", inventions can be made by multiple people without taking it away from the inventor ISSUE (Macfie): Any natural right would be the right to use one's own invention o But patents might actually prevent this since someone else could obtain a patent on something which one invents ISSUES (Liddell) o Lacks explanatory power
? Patent law doesn't recognise the efforts of all labourers, but only that of the first inventor (even if a 2nd inventor spends effort developing independently)
? Patent law only recognises inventive labour

Patent law doesn't prevent wastage since there is no revocation for non-use
? Does not leave enough for others if basic ideas can be totally monopolised o Lacks normative power
? Unclear why it labour should naturally give rise to property
? Unclear how conflicting rights can be balanced (e.g. right to property vs right to health) NOTE: Many international conventions place IP within the right to property-

Just reward for inventorsBased on the moral rights of inventors to receive reward for their labour ISSUE (Machlup and Penrose): Even if this isn't denied, that doesn't mean that the reward has to come in the form of a patent o The time interval between his use of the invention and imitation by competitors might accrue enough financial reward?
o Cash prizes or bonuses might be paid out instead of creating monopolies that prevent others from building on the inventions
? BUT a bonus system might be susceptible to corruption and arbitrariness due to the exercise of discretion involved

Utilitarianism---

Based on the assumptions that industrial progress or inventive activity is desirable and that the patent system is capable of incentivising such activity Incentive to create or invest in R&D o The argument is that there is high cost in creation but ease of copying, so there must be an incentive to create rather than copy Incentive to develop or commercialise the invention o Huge amounts of investment are required to transform he initial idea into a marketable product which would benefit consumers o The assumption is that inventors wouldn't want to make this investment if they couldn't be sure of recouping profits at the end (rather than competitors benefitting from it instead) ISSUE: The patent system is actually very expensive o Social cost of diverting inventive activity into more lucrative fields o Bureaucratic and administrative cost o Economic disadvantages from having a monopoly o Social cost in preventing other producers from building on the invention o Litigation and registration cost o Transaction costs ISSUE (Johnson): There is insufficient empirical evidence of the effectiveness of patents o People have an intrinsic desire to create and would do so even without patents o Pharmaceutical study by Mansfield (1986) suggests that 35% of pharmaceutical inventions would be released without patent protection o Open source software is well-developed despite the lack of patents
? BUT this might be the exception rather than the rule ISSUE (Lerner): Where patent protection has been strengthened by policy changes, that hasn't resulted in a corresponding increase in patent registration o Suggests that a stronger patent system doesn't really incentivise invention ISSUE (Nathan): Patent law sets the wrong kind of targets and isn't socially desirable

o o

o o-

Especially in fields such as medicine, it incentivises profitable inventions rather than socially beneficial ones (since only the wealthy can pay for it) Between 1975-1997, only 1% of new chemicals patented were aimed at combating tropical diseases rather than diseases in the richer, wealthier West Suggests that governments should pay drug makers based on the disease benefit of their drug inventions NOTE: The views opposing patents aren't consistent on whether they think the system actually incentivises producers in a certain way (Machlup and Penrose): The actual inventors may not be the holders of the

ISSUE patent o They may produce the invention in the course of employment or be forced to sell the patent right off at a low cost o Might be better to consider patents an incentive of capital and investment into development of inventions Incentive to disclose information o Argument: without patents, the initial inventor is more likely to keep the invention a secret rather than allowing it to benefit society
? Seen as a quid pro quo: giving the inventor a temporary monopoly in exchange for his disclosure of the invention o ISSUES (Machlup and Penrose)
? Even if inventors keep their ideas secret, the same might be developed independently elsewhere
? These secrets would be found out by competitors
? If the inventor was sure of his ability to keep the secret, he would also refrain from applying for a patent anyway o ISSUE (Fromer): Disclosure from patents doesn't help with cumulative innovation
? Evidence suggests that very few scientists actually read patent registers or cite patents in their research

Long: Patents work as signalling or co-ordinating devicesCan be used to inform others that the company is operating in a specific field

Merges: Mid-level justificatory theoryDraws on Rawls' theory that it is easier to find mid-level principles that give overarching consensus rather than searching for underlying truth Suggests that neither utilitarianism nor natural rights theories can be proven Should look for mid-level principles o E.g. efficiency, preservation of public domain, proportionality, dignity ISSUE: These don't really seem to be the guiding principles of IP law

ISSUE (Shiva): IP rights (including patents) are forced onto developing countries by developed countries, despite some of the justifications not being as applicable to themKnowledge is a "collective, cumulative enterprise" Research isn't only motivated by profits International IP rights don't actually help R&D and technology transfer in developing countries o There may be underdeveloped innovation systems which fail to make use of the disclosed information o If the products can be imported, they have less incentive to set up local R&D

ISSUE: The patent system might lead to bio-piracyCommercial exploitation of traditional knowledge Whereas indigenous or traditional communities are less able to benefit from the patent system

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