IP Seminar 6
1. What does a patent protect, and under what conditions? How does this differ from
copyright? What are the requirements placed upon an invention for it to be
considered eligible for protection?
2. What are the limitations placed upon the exercise of a patent? How may a patent
be infringed?
3. Based on the readings for this session, do you believe that patents still constitute
a good ‘bargain’? What is meant by ‘bargain’ in this context?
4. Can software be protected by patents? Are there any regional variations?
What is Patent
- A state granted (territoriality!) exclusive right over an invention or potentially a
process for 20 years
- It provides the right holder with the right to prevent others from doing anything with
the invention; can exclude others from using the invention or process
- Patent for product vs for process:
o Up to 1991/92 India didn’t allow for product-based pharmaceutical patents
but you could obtain one for the process of production of the drug if it met
criteria, product itself excluded on policy grounds
o Onca Mouse case: Researchers at Harvard patented a mouse subjected to
genetic modification to be predisposed to cancer or diabetes
People took issue with this as it was in effect patenting life and the
process by which it was created and born wasn’t a man-made process
Argument was that they should have obtained a process patent for
the method in which they spliced its genes
Copyright
One form of IP, some would say its most important form, encapsulating everything we are
trying to promote and protect
- Promote artistic creativity
- Protect expressions of artistic creativity
No need to register as of BC
There is a bundle of rights: you have the:
- Right of reproduction (can copy own work),
- Right of translation
- Right of adaptation; can change, have derivatives e.g. Hermione’s back story
- Right to make different arrangements; different databases
- Right to perform work publicly
- Right to recite it publicly
- Right to communicate it to the public
- Right to broadcast
These are all economic rights in essence, providing ways to make profits.
There is also the side of moral rights to do with the integrity of the work
- The right to claim authorship over the work (however if you work e.g. for DC Comics,
your work will belong to them; clause that surrenders moral rights will be in contract
so you cannot claim authorship)
- The right to object to mutations or adaptations of the work that are prejudicial to
your honour and reputation as an author
, - Born of the same Copyright Statute; Copyright Designs and Patent Act 1988
- Westminster included a qualifier that said a work must be original
- Bern, WIPO and TRIPS don’t mention originality as domestic law does
- What we are looking for is ‘more than trivial labour’
- It isn’t about judging creative value but need to have some kind of criteria
- Courts settled on examining ‘the extent to which a qualitatively
All of these are also discretionary
A limit or exception means you can use protected works without compensation to IP holder
and authorisation or permission
Some exceptions are built into Bern Convention Article 9
It also makes a point about the nature of these exceptions; 3-point rule
- Exceptions are a matter of national legislation, a domestic prerogative so can be
different in each country
- BUT national prerogative within bounds: 3-point test
o They must be in special cases aka not the standard; cannot put in place an
absolute exception to anything
o Exception cannot conflict normal exploitation of the work
o (Discretionary again) Cannot unreasonably prejudice legitimate interests of
the author
Four Requirements of Patentability
- Criteria contained in TRIPS, Paris Convention, Patent Convention
- Case law is useful in knowing how to interpret/ assess them
o 1.Novelty
UK Patent Act s2; does not form part of the state of the art so not
really known
A very important criterion
Any publication anywhere in the world of this invention will negate
the possibility of patent based on this as it destroys novelty
Any use of the invention anywhere in the world will also preclude
patentability on this basis
This is the standard approach: has it been published? Has it been
used?
An American agricultural company obtained patent over GM
Basmati rice; showed it was a slightly longer and thinner and
more fragrant grain, patent successful on novelty
This was challenged by farmers, especially Indian ones
Why? They already produced Basmati rice and shipped it to
US> If company had patent, and basmati possessing the same
characteristics, it would be prohibited in US market
Ultimately overturned as they found an old text with reference
to basmati that was long thin and fragrant proving prior
publication
There is a lot of controversy, especially around medical products
Plant we didn’t know can help deal with headaches
BRAC1 or BRAC2 test; the cancer tech above
1. What does a patent protect, and under what conditions? How does this differ from
copyright? What are the requirements placed upon an invention for it to be
considered eligible for protection?
2. What are the limitations placed upon the exercise of a patent? How may a patent
be infringed?
3. Based on the readings for this session, do you believe that patents still constitute
a good ‘bargain’? What is meant by ‘bargain’ in this context?
4. Can software be protected by patents? Are there any regional variations?
What is Patent
- A state granted (territoriality!) exclusive right over an invention or potentially a
process for 20 years
- It provides the right holder with the right to prevent others from doing anything with
the invention; can exclude others from using the invention or process
- Patent for product vs for process:
o Up to 1991/92 India didn’t allow for product-based pharmaceutical patents
but you could obtain one for the process of production of the drug if it met
criteria, product itself excluded on policy grounds
o Onca Mouse case: Researchers at Harvard patented a mouse subjected to
genetic modification to be predisposed to cancer or diabetes
People took issue with this as it was in effect patenting life and the
process by which it was created and born wasn’t a man-made process
Argument was that they should have obtained a process patent for
the method in which they spliced its genes
Copyright
One form of IP, some would say its most important form, encapsulating everything we are
trying to promote and protect
- Promote artistic creativity
- Protect expressions of artistic creativity
No need to register as of BC
There is a bundle of rights: you have the:
- Right of reproduction (can copy own work),
- Right of translation
- Right of adaptation; can change, have derivatives e.g. Hermione’s back story
- Right to make different arrangements; different databases
- Right to perform work publicly
- Right to recite it publicly
- Right to communicate it to the public
- Right to broadcast
These are all economic rights in essence, providing ways to make profits.
There is also the side of moral rights to do with the integrity of the work
- The right to claim authorship over the work (however if you work e.g. for DC Comics,
your work will belong to them; clause that surrenders moral rights will be in contract
so you cannot claim authorship)
- The right to object to mutations or adaptations of the work that are prejudicial to
your honour and reputation as an author
, - Born of the same Copyright Statute; Copyright Designs and Patent Act 1988
- Westminster included a qualifier that said a work must be original
- Bern, WIPO and TRIPS don’t mention originality as domestic law does
- What we are looking for is ‘more than trivial labour’
- It isn’t about judging creative value but need to have some kind of criteria
- Courts settled on examining ‘the extent to which a qualitatively
All of these are also discretionary
A limit or exception means you can use protected works without compensation to IP holder
and authorisation or permission
Some exceptions are built into Bern Convention Article 9
It also makes a point about the nature of these exceptions; 3-point rule
- Exceptions are a matter of national legislation, a domestic prerogative so can be
different in each country
- BUT national prerogative within bounds: 3-point test
o They must be in special cases aka not the standard; cannot put in place an
absolute exception to anything
o Exception cannot conflict normal exploitation of the work
o (Discretionary again) Cannot unreasonably prejudice legitimate interests of
the author
Four Requirements of Patentability
- Criteria contained in TRIPS, Paris Convention, Patent Convention
- Case law is useful in knowing how to interpret/ assess them
o 1.Novelty
UK Patent Act s2; does not form part of the state of the art so not
really known
A very important criterion
Any publication anywhere in the world of this invention will negate
the possibility of patent based on this as it destroys novelty
Any use of the invention anywhere in the world will also preclude
patentability on this basis
This is the standard approach: has it been published? Has it been
used?
An American agricultural company obtained patent over GM
Basmati rice; showed it was a slightly longer and thinner and
more fragrant grain, patent successful on novelty
This was challenged by farmers, especially Indian ones
Why? They already produced Basmati rice and shipped it to
US> If company had patent, and basmati possessing the same
characteristics, it would be prohibited in US market
Ultimately overturned as they found an old text with reference
to basmati that was long thin and fragrant proving prior
publication
There is a lot of controversy, especially around medical products
Plant we didn’t know can help deal with headaches
BRAC1 or BRAC2 test; the cancer tech above
