Journal of Intellectual Property Rights

Special Issue

on
Patents and Emerging Technologies

 

Total visitors: 2,095     since 23-01-07

VOLUME 12

NUMBER 1

JANUARY 2007

CODEN: JIPRFG 12(1) 1-190 (2007)

 

ISSN: 0971-5544

 

CONTENTS

 

Patenting in the Emerging Fields of Technology

15

      K S Kardam 

 

Human Embryonic Stem Cell Patents: A European Perspective

30

        Peter Whittaker 

 

The Discovery of Invention: Gene Patents and the Question of Patentability

38

        Johanna Gibson

 

 

Patenting of Genetic Inventions

45

        Malathi Lakshmikumaran 

 

Genomics and IP: An Overview

57

        Anandita Singh, Sandip Das and Neeti Wilson

 

 

Biotech Innovation and Patenting in the Developing World: China — A Giant Among Nations?

 

72

      Shawn H E Harmon

 

 

PIPRA: A Resource for Collaborative Intellectual Property Management in Agriculture

86

      Sara Boettiger and Alan Bennett

 

 

Rational Risk/Benefit Analysis of Genetically Modified Crops

92

      Stanley Kowalski 

 

'Diagnostic Method' Patent Model — Patent Incentives and Socio-ethical Concerns

104

      Kalyan C Kankanala 

 

Trends in Intellectual Property and Nanotechnology: Implications for the Global South

111

      Hope Shand and Kathy Jo Wetter 

 

What’s New?  Innovating The Teaching of Innovation Law

118

      William O Hennessey 

 

Patent Systems: More Easily Faulted Than Fixed

129

      Thomas G Field, Jr

 

R&D Networks and Intellectual Property Hubs: A Strategy for Developing Countries to Participate in Knowledge led Growth

 

142

      Cynthia Cannady and Marisol Iglesias Vega 

 

Patent Valuation with Consideration for Emerging Technologies

154

      Mrinalini Kochupillai and Matthew A Smith

 

 

What is in a Name?: Viewing Patent Infringement through the Prism of Anglo-American Doctrines

 

165

      V K Unni

 

 

IPR, Law and FLOSS: Building a Protected Common

176

      Rishab Aiyer Ghosh

 

 

Should India and Other Countries Adopt the American ‘Business Methods’ Class of Patents?

183

      Robert H Rines

 

 

Journal Profile—World Patent Information

185

 

Author index

 

 

Bennett Alan

86

Lakshmikumaran Malathi 45

Boettiger Sara

86

Rines Robert H

183

Cannady Cynthia

142

Shand Hope

111

Das Sandip

57

Singh Anandita

57

Field Thomas G, Jr

129

Smith Matthew A

154

Ghosh Rishab Aiyer

176

Unni V K

165

Gibson Johanna

38

Vega Marisol Iglesias

142

Harmon Shawn H E

72

Wetter Kathy Jo

111

Hennessey William O

118

Whittaker Peter

30

Kankanala Kalyan C

104

Wilson Neeti

57

Kardam K S

15

Kochupillai Mrinalini

154

Kowalski Stanley

92

 

 

 

 Keyword index

 

Agricultural biotechnology

86

Comparative roles of judge and juror

129

Asset commercialization

142

Copyright

176

Asset development

142

Data mining

154

Asset management

142

Development

38

Asset protection

142

Diagnostic methods

104

Bioengineering

72

DNA sequencing

57

Bioinformatics

15

Doctrine of equivalents

129

Biotech innovation

72

Equivalents

165

Biotechnology

38, 92

Enabling technology

86

Biotechnological inventions

15

Informatics

154

Citation analyses

154

Innovation

129

Embryos

30

Innovation law

118

ESTs

45, 57

Intellectual assets

118

Floss community

176

Intellectual property

15, 111

Genetic engineering

92

Intellectual property rights

176

Genetics and gene sequence

38

International Depository Authority

15

Genetically modified crops

92

Invalid patents

129

Genomics

57

IP protection

57

GM crop

72

IP strategy

142

IP hub

142

Legal framework

176

IP management in agriculture

86

License

176

IP policy

142

Microorganism

45

License agreement

118

Nanotechnology

111

Microarrays

57

Patent

30,38,104

Non-literal infringement

154

Patent courts

129

Obviousness

129

Patent examination

154

Patentability

38

Patent examination cost

129

Patent critics

129

Patent infringement

2,129,165

Patent model

104

Patent litigation cost

129

Patent reform

129

Recombinant DNA technology

45

Patent remedies

129

Prosecution history estoppel

165

Patent thicket

129

Precautionary principle

92

Patent troll

129

Recombinant vectors

45

Patent valuation

154

Regulation

92

PIPRA

86

Risk analysis

92

Pith and marrow

165

SNPs

45

Plant breeding

92

Software patents

165

Trait technology

86

Stem cells

30

TRIPS

3, 72, 111, 118

Telecommunication

15

 

 

 

 


 

 

 

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 15-29

 

Patenting in the Emerging Fields of Technology*

 

K S Kardam

Received 6 December 2006

This paper analyses various provisions of the Patents Act, 1970 as amended upto 2005 and the procedure provided for the protection of inventions in the emerging fields of technologies such as biotechnology, bioinformatics, agricultural biotechnology, computer related inventions, communication, nanotechnology, etc. The patent rights being territorial in nature are enforceable within the country, which grants the patent. India follows more or less global standards for patenting any invention. The non-patentable conditions generally differ from country to country and therefore, differentiate certain subject matter for patenting. Now by virtue of amendments in the Patents Act, 1970 in 2002 and 2005, product patents can be granted for pharmaceuticals, agrochemicals, food and chemicals. It is also now possible to grant patent in the field of biotechnology, particularly, for living substances, such as, vaccines, monoclonal antibodies, new diagnostics using microorganisms, polymerase chain reaction (PCR) technology, gene sequencing, etc. However, living material including microorganisms occurring in nature are excluded from patenting under the law. In case of computer related inventions involving software, it is possible to grant patent for embedded software provided there is a technical application.

Keywords: Intellectual property, International Depository Authority, biotechnological inventions, bioinformatics, telecommunication

 

 

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 30-37

 

Human Embryonic Stem Cell Patents: A European Perspective

Peter Whittaker

Received 13 September 2006

Although patents involving human embryonic stem cells have been granted in USA and some other countries, the situation in Europe has been complicated by ethical exclusion clauses in the European Patent Convention and the European Biotechnology Directive. These have resulted in protracted delays in the processing of embryonic stem cell patents by the European Patent Office. It is concluded that ethical exclusion from grant of patents may not be appropriate. It is also suggested that the desirability of granting broad patents that lay claim to a large body of future research should be discussed. This paper discusses aspects of the patenting of stem cell processes and products with particular emphasis on human embryonic stem cells.

Keywords: Embryos, stem cells, patents

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 38-44

 

The Discovery of Invention: Gene Patents and the Question of Patentability

Johanna Gibson

Received 13 November 2006

The application of patent protection for gene sequences and associated technological developments have met with much controversy and indeed misunderstanding. But in so far as intellectual property protection is afforded to products in order to develop and sustain certain markets, any misunderstanding cannot be dismissed. The very nature of the intellectual property bargain with the public is such that the relationship with the consumer underpins the legitimacy of the law. So-called gene patents are arguably no different. Considering developments in Europe and other jurisdictions, this paper considers the problematic scope of so-called gene patents and identifies factors, both within the legal framework and in terms of the socio-economic policies underpinning intellectual property, that support a restricted purpose-bound approach to patent protection of gene sequences. Arguably, such an approach demonstrates the critical nexus between the inventiveness of such technology and its use.

Keywords: Patent, patentability, biotechnology, genetics and gene sequence, development

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 45-56

 

Patenting of Genetic Inventions

Malathi Lakshmikumaran†

Received 25 September 2006

The genetic inventions in the patent system are similar to chemical inventions. Genetic inventions that are patentable include genetic materials such as DNA, RNA, cDNA, EST’s (Expressed Sequence Tags), SNPs (Single Nucleotide Polymorphs) and recombinant vectors. These inventions need to satisfy the criteria of patentability such as novelty, non- obviousness, utility, enablement and sufficiency of disclosure. The utility standards for genetic inventions are higher than for other inventions. The USPTO has issued guidelines for the utility requirement with respect to genetic sequences. These have been further clarified by recent court decisions in the US. One of the issues relating to patenting of genetic inventions revolves around the question whether a DNA sequence is a discovery or an invention. In Europe, the recently issued directive on biotechnology clearly distinguishes between a discovery and an invention. The Directive makes it clear that genes or other biological elements, which are isolated from their natural environment and having a technical effect, are patentable. This article discusses most of the issues relating to patenting of genetic inventions.

Keywords: ESTs, SNPs, recombinant vectors, microorganism, recombinant DNA technology

 

 

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 57-71

Genomics and IP: An Overview

Anandita Singh†a, Sandip Dasb & Neeti Wilsonc

Received 11 October 2006

The field of genomics and systems biology promises to provide unconventional solutions to problems relating to healthcare and agriculture. The various biotechnologies centred on genomics are undeniably a dominant force in the world of economics and the stakes are enormous. The field of genomics and system biology is immensely cross-sectoral and flourishes the most when the knowledge from various domains are integrated. However, this very essence of genomics adds layers of complexities while segregating the contributions from various domains related to IPRs. The foremost technologies guiding the advancements in the field of genomics include genome-wide sequencing, high throughput expression profiling, bioinformatics and the resultant databases.

The need to protect and capitalize innovation is sacrosanct to best business practices. At the same time, providing access to the benefits accruing from such innovations to public is of importance to the society at large. IPR regime attempts to meet these seemingly conflicting objectives of providing incentive to the innovators and yet acting as a disclosure mechanism for promoting a continuum in research and development. This dual reward-and-disclosure clause is beneficial to both the inventor and the end user. This article attempts to map the high throughput genomic technologies along with their attendant databases and analysis tools. Through this outline, the article makes an attempt to inform the extent of IP protection and issues emanating from the application of such technologies.

Keywords: Genomics, IP protection, ESTs, microarrays, DNA sequencing

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 72-85

 

Biotech Innovation and Patenting in the Developing World:
China – A Giant Among Nations?

Shawn H E Harmon

Received 18 September 2006

The mantra of pro-patenting stakeholders is that intellectual property rights, and in particular, patent rights, promote innovation. But can this claim be supported? And is it always true? This article analyses the claim within the context of the developing world and healthcare settings. Having articulated the special case that medical patents represent in the developing world, it goes on to consider the patent regime in China, outlining the content of the modern Chinese patent law with a view to assessing how it reflects China’s economic and healthcare situation, and identifying what other developing countries might take from it.

Keywords: Bioengineering, TRIPS, GM crop, biotech innovation

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 86-91

 

PIPRA: A Resource for Collaborative Intellectual Property
Management in Agriculture

Sara Boettiger & Alan Bennett

Received 20 October 2006

Recent decades have seen an increase in intellectual property protection worldwide. Accompanying this trend, there have been growing concerns about how best to encourage the development and distribution of technologies that benefit developing countries within this new and rapidly changing landscape of intellectual property rights (IPRs). PIPRA
(The Public Intellectual Property Resource for Agriculture) addresses these issues in the area of agriculture by mobilizing collaborative support of a wide range of public sector institutions worldwide. In addition to this broad base of institutional support, PIPRA’s molecular biology labs and its network of pro bono IP attorneys together allow a coordination of scientific and legal resources that is crucial for the provision of practical IP services to support advances in developing country agriculture.

Keywords: PIPRA, IP management in agriculture, agricultural biotechnology, enabling technology, trait technology

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 92-103

 

Rational Risk/Benefit Analysis of Genetically Modified Crops

Stanley Kowalski

Received 5 September 2006

Safety concerns over the use of molecular biotechnology in the improvement of crops has generated substantial, heated and confusing debates, often driven by ideology and hysterics. Modification of crops is not new, and biotechnology (in its broadest sense) has been used for over a century to accelerate the development of new crops for food, feed and fibre, so as to meet the demands of a growing global community. The introduction of crops developed via molecular biotechnology [Genetically Modified Crops (GMCs)] represents the latest step in this inexorable innovative progression of technology. However, misinformed concern has led to a broad embrace of the Precautionary Principle as a regulatory paradigm for GMCs, such that research, development and deployment are delayed, hindered or outright halted. Although of possible use in limited applications, the Precautionary Principle is likely impracticable, as it posits an untenable philosophical paradox of proving the negative proposition that GMCs will never be unsafe. If such a position is accepted, then any technological process can be permanently stymied. To date, empirical observations indicate that there have been no documented problems associated with GMCs. On the contrary, all of the documented fiascos have been due to conventional ‘biotechnology’, e.g., mad cow disease, virus contaminated vaccines and the development of toxic crops via conventional plant breeding. Therefore, regulation of GMCs, whether in the United States or in Europe, should move away from a process/method focus and to a product risk/benefit analysis, that is, a case-by-case evaluation of any new organism, regardless of as to how it was developed, or (as in the case of introduced exotic plants) if it even was the product of biotechnology. A rationally based, risk assessment, risk management paradigm appears to be a far better regulatory approach, especially in the light of empirical determination of actual risks and benefits.

Keywords: Biotechnology, regulation, precautionary principle, risk analysis, genetically modified crops, genetic engineering, plant breeding

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 104-110

 

'Diagnostic Method' Patent Model Patent Incentives and Socio-Ethical Concerns

 

Kalyan C Kankanala

Received 28 September2006

Medical methods have been excluded from the scope of patentability by most countries in consideration of ethics inherent in the practice of medicine. While the prohibition against patentability of surgical and therapeutic methods in which a doctor would directly be involved at all steps is viewed stringently by patent offices and courts, the exclusion relating to diagnostic methods is given a flexible treatment due to evolution of technology based diagnostics, involvement of technicians and decrease in intervention of doctors. This paper expounds the law relating to patentability of diagnostic methods, compares the differences in patent laws of various countries with the help of examples and concludes with suggestions for a diagnostic method patent model for India.

Keywords: Patent, diagnostic methods, patent model

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 111-117

Trends in Intellectual Property and Nanotechnology: Implications for the Global South

Hope Shand and Kathy Jo Wetter

Received 1 September 2006

The race is on to win exclusive monopoly patents on nano-scale materials, devices and processes. The US National Science Foundation predicts that the immensely broad power and scope of nano-scale technologies will revolutionize manufacturing across all industry sectorscapturing a $1 trillion market within six or seven years. Although industry analysts assert that nanotech is in its infancy, patent thickets on fundamental nano-scale materials, tools and processes are already creating thorny barriers for would-be innovators. Industry analysts warn that, ‘IP roadblocks could severely retard the development of nanotechnology.’1 After a decade of confusion and controversy over biotech patents, South governments are now facing a newer, bigger technology wave. By 1 July 2013 even ‘least developed’ countries will be obligated by the World Trade Organization’s Trade-Related Aspects of Intellectual Property (TRIPS) to accommodate nanotechnology-related inventions. Despite rosy predictions that nanotech will provide a technical fix for health, sustainable energy and environmental security in the South, researchers in the developing world are likely to find that participation in the proprietary ‘nanotech revolution’ is highly restricted by patent tollbooths, obliging them to pay royalities and licensing fees to gain access.

Keywords: Nanotechnology, intellectual property, TRIPS

 

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 118-128

 

What’s New? Innovating the Teaching of Innovation Law

William O Hennessey

Received 25 September 2006

The human resource component is a critical bridge between IPR protection, innovation promotion, and economic development. This paper reviews efforts to create a replicable model for teaching IP and innovation law based upon two decades of building and teaching such a curriculum in the United States to law students, scientists and engineers, business managers, and government officials. One broad point of emphasis is the importance of the cross-disciplinary classroom (equally addressing the needs and interests of those groups of students) for the development of a cadre of ‘IP professionals’. But development of an IP profession, standing alone, is inadequate. Hence, the second point of emphasis is the need to impart highly specialized transactional, managerial, and negotiation skills, to turn ‘IP professionals’ into true ‘innovation professionals’ who can serve as a platform for a truly indigenous and self-perpetuating ‘infrastructure of innovation’.

Keywords: Innovation law, TRIPS, license agreement, intellectual assets

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 129-141

 

Patent Systems: More Easily Faulted Than Fixed

Thomas G Field, Jr

Received 15 August 2006

The US patent system has been the subject of three recent, generally critical studies. One, particularly uncomplimentary, primarily faults a changed source of funds for patent examination and creation of a court that, aside from the Supreme Court, has exclusive jurisdiction to consider patent appeals, both administrative and judicial. This paper explains why neither criticism is well taken. It also analyses reactions of the US Congress and Supreme Court to allegedly new problems caused by so-called patent thickets and patent trolls.

Keywords: Innovation, patent critics, patent reform, invalid patents, patent examination cost, patent litigation cost, patent courts, comparative roles of judge and juror, patent infringement, patent remedies, patent thicket, patent troll, doctrine of equivalents, obviousness.

 

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 142-153

 

R&D Networks and Intellectual Property Hubs: A Strategy for Developing Countries to Participate in Knowledge led Growth

Cynthia Cannady and Marisol Iglesias Vega

Received 19 October 2006

This article identifies challenges experienced by developing countries as they seek to use their universities and research institutions to participate in knowledge led economic growth, which two drivers are defined as R&D investment and IP infrastructure. Those challenges include low investment in R&D and lack of IP innovation infrastructure necessary to convert research results into IP assets, including policies on ownership of research results, technology licensing offices and professional IP services. It describes networks in theory and  practice and the role played by IP, and proposes R&D networks and IP hubs as a strategy to support appropriation and distribution of research results as technologies.

Keywords: IP policy, asset management, asset development, asset protection, asset commercialization, IP hub, IP strategy

 

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 154-164

 

Patent Valuation with Consideration for Emerging Technologies

Mrinalini Kochupillai†a & Matthew A Smithb

Received 11 September 2006

In this paper, traditional methods of patent valuation are explained, including the standard preparation work and various models that can be applied to arrive at an estimate. The drawbacks of these approaches and informatics-based relative valuations are also evaluated. The application of these methods in the various contexts of ‘emerging technologies’ is also discussed.

Keywords: Patent valuation, patent examination, citation analyses, data mining, informatics

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 165-175

 

What is in a Name? : Viewing Patent Infringement through the Prism of
Anglo-American Doctrines

 

V K Unni

Received 14 October 2006

It is always difficult for any court to decide upon issues of patent infringement and this may become more difficult in the cases involving non-literal infringement. Furthermore, emerging technologies like biotech and nanotech can complicate this matter. However, courts in different jurisdictions have formulated various tests to determine non-literal infringements. Although, these tests are not completely fool-proof, they have succeeded to a great extent in preventing colourable imitations of an invention. In USA, the courts have been applying the doctrine of equivalents/equivalence and in UK, in courts invoke the pith and marrow rule to determine infringement. Both doctrines have their own merits and de-merits and both have done a commendable job in safeguarding the rights of the patent holder. Sooner than later the Indian courts also will have to deal with these complex issues dealing with non-literal infringement of patents. This article explores all these issues in the context of emerging technologies like biotech, with the help of landmark US and UK case laws.

Keywords: Patent infringement, equivalents, pith and marrow, prosecution history estoppel, non-literal infringement

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 176-182

 

IPR, Law and FLOSS: Building a Protected Common

Rishab Aiyer Ghosh

Received 13 November 2006

This paper provides an overview of copyright and patents as they apply to software, and how open source depends on and uses some aspects of the IPR system for its existence, but may be threatened by others. It examines the incentives to release software as open source under different legal instruments, and compares impact of legal frameworks for open source on innovation to traditional frameworks such as patenting.

Keywords: FLOSS community, license, copyright, software patents, legal framework, intellectual property rights

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 183-184

Opinion

Should India and Other Countries Adopt the American ‘Business Methods’
Class of Patents?

Robert H Rines

Received 30 October 2006

Journal of Intellectual Property Rights

Vol 12, January 2007, pp 185-186

Journal Profile

 

World Patent Information