Toward a Cautious Approach to Obeisance: The Role of Scholarship in Federal Circuit Patent Law Jurisprudence

2002 ◽  
Author(s):  
Craig Allen Nard
Keyword(s):  
Patent Law ◽  
Cautious Approach ◽  
Federal Circuit

Patents, Governance and Control: Ethics and the Patentability of Novel Beings and Advanced Biotechnologies in Europe

2021 ◽  
Vol 30 (3) ◽  
pp. 529-542
Author(s):  
Aisling McMahon
Keyword(s):  
Ethical Issues ◽  
Patent Law ◽  
European Patent ◽  
Human Consciousness ◽  
Patent Holder ◽  
Patented Invention ◽  
Patent Grant ◽  
And Control

AbstractThis article focuses primarily on to what extent novel beings, and particularly, beings which display something akin to human consciousness or agency would be (or should be) patentable under current European patent law. Patents grant the patent holder a right to exclude others from using the patented invention for the period of patent grant (usually 20 years). This allows the patent holder to control how that invention can or cannot be used by others downstream, granting patent holders a governance like function over the patented technology for the duration of the patent. Accordingly, the potential for patentability of novel beings gives rise to a myriad of ethical issues including: to what extent is it appropriate for patent holders to retain and exercise patents over “novel beings”; how issues of “agency” displayed by any “novel beings” would fit within the current patent framework, if at all; and to what extent existing exclusions from patentability might exclude patents on “novel beings” or whether changes within patent law may be needed if patents in relation to “novel beings” are deemed ethically problematic. This article focuses on such issues, and in doing so, also sheds light on the role of ethical issues within the patenting of advanced biotechnologies more generally.

scholarly journals Life After Bilski

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Supreme Court ◽  
Real World ◽  
Subject Matter ◽  
Case Law ◽  
Patent Law ◽  
District Courts ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Abstract Ideas ◽  
New Applications

In Bilski v. Kappos, the Supreme Court declined calls to categoricallyexclude business methods - or any technology - from the patent law. It alsorejected as the sole test of subject matter eligibility the FederalCircuit’s deeply-flawed "machine or transformation" test, under which noprocess is patentable unless it is tied to a particular machine ortransforms an article to another state or thing. Subsequent developmentsthreaten to undo that holding, however. Relying on the Court’s descriptionof the Federal Circuit test as a "useful and important clue', the U.S.Patent and Trademark Office, patent litigants, and district courts have allcontinued to rely on the machine-or-transformation test in the wake ofBilski: no longer as the sole rule, but as a presumptive starting pointthat threatens to effectively become mandatory. In this Article, we suggesta new way to understand the exclusion of abstract ideas from patentablesubject matter. No class of invention is inherently too abstract forpatenting. Rather, the rule against patenting abstract ideas is an effortto prevent inventors from claiming their ideas too broadly. By requiringthat patent claims be limited to a specific set of practical applicationsof an idea, the abstract ideas doctrine both makes the scope of theresulting patent clearer and leaves room for subsequent inventors toimprove upon - and patent new applications of - the same basic principle.Recasting the abstract ideas doctrine as an overclaiming test eliminatesthe constraints of the artificial machine-or-transformation test, as wellas the pointless effort to fit inventions into permissible or impermissiblecategories. It also helps understand some otherwise-inexplicabledistinctions in the case law. Testing for overclaiming allows courts tofocus on what really matters: whether the scope of the patentee's claimsare commensurate with the invention’s practical, real-world contribution.This inquiry, we suggest, is the touchstone of the abstract ideas analysis,and the way out of the post-Bilski confusion.

scholarly journals Medicine Between Ethics and Scientific Progress: How Much Ethics Needs Medicine, how much ethics can it afford? Some Considerations from Patent Law Perspectives

2015 ◽  
Vol 8 (1) ◽  
pp. 47-76
Author(s):  
Joseph Straus
Keyword(s):  
New Technologies ◽  
Embryonic Stem ◽  
Scientific Progress ◽  
Modern Medicine ◽  
Patent Law ◽  
The European Union ◽  
Ethical Concerns ◽  
Legal Situation ◽  
Risky Investment

The progress of medicine is heavily dependent on the progress of science and technology, which in turn depend on costly and risky investment in research and development. In this contribution, based on some concrete examples, new scientific achievements are presented as basis of modern medicine and source of ethical concerns. Addressed are also the role of scientists in coping with safety in ethical concerns as regards hazards of new technologies, costs of R&D investment in drug development and the role of patents in this context. In some detail the legal situation existing at an international and European level as regards exclusions from patentability based on reasons of ethics and morals is presented. A critical appraisal of the case law of the Court of Justice of the European Union as regards patentability of embryonic stem cells is offered.

The “Polemical” Spirit of European Constitutional Law: On the Importance of Conflicts in EU Law

2015 ◽  
Vol 16 (6) ◽  
pp. 1343-1374 ◽  
Author(s):  
Giuseppe Martinico
Keyword(s):  
Constitutional Law ◽  
The Other ◽  
Preliminary Ruling ◽  
Eu Law ◽  
Constitutional Courts ◽  
Cautious Approach ◽  
Court Of Justice ◽  
The One ◽  
The Eu

Recently, scholars have argued of the necessity of going beyond “judicial dialogues” and “conflict-and-power” approaches to the analysis of the role of national Constitutional Courts in the Union. On the one hand, there are risks connected to a “too welcoming an approach by national constitutional courts to EU law”; on the other hand, it is possible to criticize both the Court of Justice of the EU (CJEU) and some national Constitutional Courts for other, less cooperative, decisions. I share this cautious approach for many reasons, and primarily because the preliminary ruling mechanism does not exhaust all the possible means of communication between constitutional courts and the CJEU. For instance, what Komárek calls “parallel references” can serve, in some circumstances, as a technique of alternative (or hidden) dialogue, that has favored a sort of “remote dialogue” over the years. My sole point of disagreement with this scholarly position is over the role of conflicts in this scenario. Whilst Komárek seems to confine conflicts to phenomena of mere resistance or to “‘cold’ strategic considerations,” in this work I am going to adopt a much broader idea of conflict, which goes beyond mere “conflicts and power games.”

PARLIAMENTARY REWARDS AND THE EVOLUTION OF THE PATENT SYSTEM

2015 ◽  
Vol 74 (3) ◽  
pp. 423-449 ◽  
Author(s):  
Robert Burrell ◽  
Catherine Kelly
Keyword(s):  
Reward System ◽  
Patent Law ◽  
The State ◽  
Patent System ◽  
Public Disclosure ◽  
Minimum Requirement ◽  
The Core ◽  
The Impact ◽  
Special Provision

AbstractThis article examines the impact on the patent system of rewards for innovation across the eighteenth and early nineteenth centuries. During this period, Parliament would regularly grant rewards to inventors, with many of these rewards being set out in legislation. This legislation provided Parliament with the opportunity to promote a model of state support for inventors: a model that made public disclosure of the invention a precondition for assistance. This had important implications for patent law, in particular, in helping to develop the role of the patent specification and the doctrine of sufficiency of disclosure. In this way, the reward system helped establish the framework under which the state would provide support for inventors. Simultaneously, however, the reward system created a space in which inventors would have to do more than meet the minimum requirement of public disclosure. Rewards allowed the state to distinguish between different classes of inventor and to make special provision for particularly worthy individuals. In this way, the reward system recognised the contribution of the “heroic inventor”, whilst leaving the core of the patent system undisturbed.

Genetic testing, ethical concerns, and the role of patent law

2000 ◽  
Vol 57 (5) ◽  
pp. 370-375 ◽  
Author(s):  
Timothy A Caulfield ◽  
E Richard Gold
Keyword(s):  
Genetic Testing ◽  
Patent Law ◽  
Ethical Concerns

Experts Judging Experts: The Role of Expertise in Reviewing Agency Decision Making

2013 ◽  
Vol 38 (01) ◽  
pp. 55-71 ◽  
Author(s):  
Banks Miller ◽  
Brett Curry
Keyword(s):  
Decision Making ◽  
Subject Matter ◽  
Data Set ◽  
Court Of Appeals ◽  
Subject Matter Expertise ◽  
Federal Circuit

What role does judicial subject matter expertise play in the review of agency decisions? Using a data set of decisions in which the Board of Patent Appeals and Interferences (BPAI) is reviewed by the Court of Appeals for the Federal Circuit, we investigate this question and find that greater subject matter expertise does make it more likely that a judge will vote to reverse an agency decision.

scholarly journals Point of Novelty

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
United States ◽  
The United States ◽  
Patent Law ◽  
The Novel ◽  
New Ideas ◽  
Federal Circuit ◽  
Fundamental Requirement

We award patents to inventors because we hope to encourage new ideas. Forthis reason, the fundamental requirement for getting a patent is that youhave invented something new.It is curious, then, that patent law itself purports to pay no attention towhich aspects of a patentee’s invention are in fact new. A patentedinvention is legally defined by its claims – written definitions of theinvention. And those written definitions virtually never call out what itis that is new about the patentee’s invention.Even if the parties do identify the novel element of an invention, the lawpurports not to care. Long-standing patent law doctrine has decried anyfocus on the “point of novelty” of an invention. The United States Court ofAppeals for the Federal Circuit evaluates the claim as a whole, not justthe piece of the claim that the patentee actually added to the storehouseof knowledge. As the court frequently puts it, “there is no legallyrecognizable . . . ‘gist’ or ‘heart’ of the invention.”It turns out, however, to be hard to sustain a rule that a law concernedwith novelty will pay no attention to the point of novelty. And sopoint-of-novelty issues crop up in a number of different doctrines inpatent law, from figuring out who counts as an inventor to whether theinventor has disclosed the “best mode” of practicing the invention to whenthe sale of a product exhausts the patentee’s rights in the patent. Courtsare inconsistent in whether and how they consider the point of novelty inthese doctrines and more. But when the Federal Circuit presented with aquestion in point-of-novelty terms, it most often falls back on the mantrathat there is no point of novelty to an invention, even if it meansdiscarding long-standing precedent.It’s time to rethink the no-point-of-novelty doctrine in patent law. Iargue that ignoring what is novel about patentee’s invention makes littlesense as an across-the-board matter, and leads to a variety of harmfulconsequences. While refusing to focus on the point of novelty serves somevaluable purposes, there are other ways to achieve those ends. And in theend, a patent regime that pays attention to what the patentee actuallyinvented, not what the patent lawyer wrote down, is more likely to achievethe goal of promoting innovation.

scholarly journals A Return to Tohunga Suppression Act 1907

2001 ◽  
Vol 32 (2) ◽  
pp. 437-462
Author(s):  
Māmari Stephens
Keyword(s):  
Pivotal Role ◽  
Subsequent Operation ◽  
Cautious Approach ◽  
Political Dominance ◽  
Political Weapon ◽  
Maori Health

In this article the author revisits the Tohunga Suppression Act 1907 to provide a fresh analysis of the rationale for its passage and subsequent operation.  The author challenges the traditional of the passage of the Act as a catalyst to improve Maori health and as a political weapon against the prophet Rua Kenana.  Rather, the author suggests that the primary intent of the Tohunga Suppression Act was to assert certainty and political dominance at a time both were seen to be absent.  The motives of the Maori members in supporting the passage of the bill are also discussed.  The article further analyses the operation of the Act.  In particular, the pivotal role of the Maori Councils in giving effect to the Act is highlighted as is the cautious approach of the judiciary.  In light of these aspects of the Act's operation, the author questions the effectiveness of the Act in achieving its proponents aims. 

scholarly journals The Surprising Resilience of the Patent System

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Patent Law ◽  
Patent System ◽  
Legal Doctrine ◽  
Legislative Reform ◽  
System P ◽  
Patent Rights ◽  
Legal Challenges ◽  
New Business ◽  
Patent Applications

The patent system seems in the midst of truly dramatic change. The lasttwenty years have seen the rise of a new business model – the patent troll– that grew to become a majority of all patent lawsuits. They have seen asignificant expansion in the number of patents granted and a fundamentalchange in the industries in which those patents are filed. They have seenthe passage of the most important legislative reform in the last sixtyyears, a law that reoriented legal challenges to patents away from courtsand toward the Patent and Trademark Office (PTO). And they have seenremarkable changes in nearly every important legal doctrine, from patenteligibility to obviousness to infringement to remedies.These changes have prompted alarm in a number of quarters. From the 1990sto the 2000s, as the number of patents and patent troll suits skyrocketed,technology companies and academics worried about the “crisis” in the patentsystem – a crisis of overprotection that might interfere with rather thanpromote innovation. By 2015, as patent reform took effect and the SupremeCourt undid many of the Federal Circuit’s expansions of patent rights, itwas patent owners who were speaking of a crisis in the patent system – acrisis of underprotection that might leave innovators without adequateprotection. Depending on one’s perspective, then, the sky seems to havebeen falling on the patent system for some time.Despite the undeniable significance of these changes in both directions,something curious has happened to the fundamental characteristics of thepatent ecosystem during this period: very little. Whether we look at thenumber of patent applications filed, the number of patents issued, thenumber of lawsuits filed, the patentee win rate in those lawsuits, or themarket for patent licenses, the data show very little evidence that patentowners and challengers are behaving differently because of changes in thelaw. The patent system, then, seems surprisingly resilient to changes inthe law. This is a puzzle. In this article, I document this phenomenon andgive some thought to why the fundamental characteristics of the patentsystem seem resistant to even major changes in patent law and procedure.The results pose some profound questions not only for efforts at patentreform but for the role of the patent system in society as a whole.

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