Journal of Intellectual Property Rights
Special
Issue
on
Patents and
Emerging Technologies
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VOLUME 12 |
NUMBER 1 |
JANUARY 2007 |
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CODEN: JIPRFG 12(1) 1-190
(2007) |
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ISSN:
0971-5544 |
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CONTENTS
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Patenting in the Emerging Fields of Technology |
15 |
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Human
Embryonic Stem Cell Patents: A European Perspective |
30 |
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The Discovery of Invention: Gene
Patents and the Question of Patentability |
38 |
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Patenting of Genetic
Inventions |
45 |
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Genomics and IP: An Overview |
57 |
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Biotech Innovation and Patenting in the Developing World:
China — A Giant Among Nations? |
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PIPRA: A Resource for Collaborative Intellectual Property
Management in Agriculture |
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Sara Boettiger
and Alan Bennett |
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Rational Risk/Benefit Analysis of Genetically Modified
Crops |
92 |
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'Diagnostic
Method' Patent Model — Patent Incentives and Socio-ethical Concerns |
104 |
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|
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Trends in
Intellectual Property and Nanotechnology: Implications for the Global South |
111 |
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What’s New?
Innovating The Teaching of Innovation Law |
118 |
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Patent
Systems: More Easily Faulted Than Fixed |
129 |
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R&D Networks and Intellectual
Property Hubs: A Strategy for Developing Countries to Participate in
Knowledge led Growth |
142 |
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Patent
Valuation with Consideration for Emerging Technologies |
154 |
|
Mrinalini Kochupillai and Matthew A Smith |
|
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What is in a Name?: Viewing Patent Infringement through
the Prism of Anglo-American Doctrines |
165 |
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IPR,
Law and FLOSS: Building a Protected Common |
176 |
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Should
India and Other Countries Adopt the American ‘Business Methods’ Class of
Patents? |
183 |
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185 |
Author index
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86 |
Lakshmikumaran Malathi | 45 | |
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86 |
183 |
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142 |
111 |
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57 |
57 |
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129 |
154 |
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176 |
165 |
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38 |
142 |
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72 |
111 |
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118 |
30 |
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104 |
57 |
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15 |
154 |
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92 |
Keyword index
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86 |
129 |
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142 |
176 |
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142 |
154 |
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142 |
38 |
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142 |
104 |
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72 |
57 |
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15 |
129 |
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72 |
165 |
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38, 92 |
86 |
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15 |
154 |
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154 |
129 |
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30 |
118 |
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45, 57 |
118 |
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176 |
15, 111 |
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92 |
176 |
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38 |
15 |
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92 |
129 |
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57 |
57 |
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72 |
142 |
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142 |
176 |
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86 |
176 |
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142 |
45 |
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118 |
111 |
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57 |
30,38,104 |
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154 |
129 |
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129 |
154 |
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38 |
129 |
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129 |
2,129,165 |
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104 |
129 |
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129 |
45 |
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129 |
165 |
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129 |
92 |
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129 |
45 |
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154 |
92 |
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86 |
92 |
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165 |
45 |
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92 |
165 |
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86 |
30 |
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3, 72, 111, 118 |
15 |
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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 sectors – capturing 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
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