Protecting product by patents? What will they think of next!

The college took care to ensure an adequate
supply of refreshments for the thirsty participants

tytoc collie is always pleased to learn what his valued colleagues are thinking, so he is particularly pleased when he receives reports on seminars and other events that he can't attend himself. This past Saturday, 4 December, he missed "Comparative Perspectives on Protecting Products by Patents". This seminar, run by Justine Pila and Graeme Dinwoodie, took place in the charming surrounds of Oxford's St Catherine's College. What happened at this august event? Let Justine take up the tale:

"Mr Justice Floyd, Daniel Alexander QC and Professor Rochelle Dreyfuss, addressed a group of patent law enthusiasts in the first of our CLIPEE (Common Law of Intellectual Property in an Era of Europeanisation) events: a half-day seminar entitled Comparative Perspectives on Protecting Products by Patents. We were fortunate to have Professor Toshiko Takenaka from the University of Washington participating as well.

Daniel Alexander QC began by discussing the methodological implications of the Marleasing (1990 ECJ) principle for sources of law, judicial reasoning, and the statutory interpretive process, before considering the patentability of biotech products before and after Monsanto v Cefetra (ECJ 2010). Next was Mr Justice Floyd, who considered the validity of intent-based claims – claims for products distinguished by the purpose or intent for which they are used, as discussed in Adhesive Dry Mounting (Ch 1910), Actavis v Merck (CA 2008) and Mobil/friction reducing additive (EBA 1989) – and the impact of claim categories on the inherent patentability of products more generally. If a process patent protects products obtained directly by the process, and a product patent protects methods of making and using the product (UK's Patents Act 1977 s 60(1)), he asked, why can’t novelty be conferred on a product by its history of production and/or destined use? The last to speak was Professor Dreyfuss, who considered the history of inherent patentability in US law, including the US approach to biotech products and other subject matter in the context of AMP v USPTO (SDNY 2010).

Each of the presentations was extremely interesting; I couldn’t hope to do any of them justice here. If a theme regarding product patents emerged, it was the need to ensure sufficient flexibility in the system to avoid an all-or-nothing approach to inherent patentability, whereby certain types of subject matter may be denied protection on the ground: a) that they don’t conform to orthodox claim categories (eg, products distinguished by their “history or destiny”); or b) that allowing them protection would result in disproportionate monopoly grants (eg, isolated genes when conceived and protected as “products as such”).

After the formal presentations, ideas for addressing these problems were discussed. One solution canvassed for a) was to rethink our conception of inherently patentable subject matter; in Mr Peter Prescott QC’s language from CFPH’s Application (HCJ 2005), to think more deeply about how we conceive individual subject matter “under the description ‘invention’”. For example, rather than as products or processes, Professor Takenaka suggested, we might conceive them as technical teachings in the German/Japanese tradition. Alternatively, and in the case of products at least, we might conceive them as constituted in part by their history and/or destiny (contra Merrell Dow (HL 1995)).

Several solutions for b) were also considered. These included (i) adopting a method of claim construction that takes explicit account of public policy and/or that which merits the invention its patent protection (see eg American Cyanamid Co (Dann’s) Patent (HL 1971), Biogen v Medeva (1995 HL) and Kirin-Amgen (2004 HL); (ii) creating more defences to infringement/compulsory licensing provisions; (iii) relying more on remedies; and/or (iv) reintroducing a law of fair basis.

There was a general lament for the law of fair basis in the era of the EPC; though it’s not quite dead yet (see Alan Nuttall Ltd v Fri-Jado UK Ltd (CA 2009)). On the other hand, Daniel Alexander QC suggested that Monsanto and other authorities might signal its re-fashioning as a post-patent principle under European law, in which guise it might be an even more effective means of ensuring proportionate protection than before. And so it was that an afternoon which begin with a discussion of the impact of Europeanisation ended with us contemplating the possibility of a common law-isation of the European patent system".

To be kept informed of further events in this series on the Common Law of IP in an Era of Europeanisation, please email Mrs Ellen Moilanan.