‘Legal Transplants in Patent Law: Why Utility is the New Industrial
Applicability’ (LSE Law and Society Working Paper, 06/March
2008); Jurimetrics: The Journal of Law and Technology Winter
2009 [FORTHCOMING]
This paper focuses on the transplantation of the ‘utility
standard’ from the US legal system into the industrial
applicability criterion of patentability as seen in EPO and
UKIPO case law. The Specific, Substantial and Credible standard
(SSCS) of utility is growing in prominence as a new gatekeeping
criterion in European patent law. This legal transplant lacks
explicit statutory basis, is largely driven by a process of
mimesis following collaboration between patent offices, and
carries the potential to generate collateral damage to a number
of neighbouring legal standards in European patent law. The SSCS
potentially undermines the ‘technical’ requirement in Europe and
highlights a growing conflation between industrial applicability
and disclosure requirements. Additionally the SSCS may increase
research tool patentability in Europe, a development that
exposes potential inadequacies in the institutional arrangements
of the receiving legal system. The legal transplant is aided by
institutional dynamics that incrementally entrench a policy
choice or legal standard, accompanied by little or no discussion
on its viability and legitimacy. The significant normative
impact of the process of transplantation of the SSCS places the
patent office at the centre of legal and policy change – an
entity that is arguably not fit for this purpose.
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working paper full text
‘Timing, Change and Continuity in the Patent System’ in Sebastian
Haunss and Kenneth C Shadlen Eds. The Politics of Intellectual
Property: Contestation over the Ownership, Use, and Control of
Knowledge and Information. Edward Elgar, 2009. [FORTHCOMING]
‘In Between the Description of a Thing and the Thing: Sufficiency of
Disclosure in the Common Law’ in The Common Law of Intellectual
Property: Essays in Honour of Professor David Vaver Eds
Bentley, Ng and D’Agostino, Hart Publishing 2009. [FORTHCOMING]
S Thambisetty and K Kumaramangalam 'Peer-review and Patents: Why the
Goose that Lays the Golden Egg may be a Red Herring' 171 30
European Intellectual Property Review (2008) 171-173
Peer-reviewed publications contribute to the value of a
biotechnology firm's patents by providing capital markets with a
credible signal of the quality of proprietary information.
However, intervention in the patent system through peer review
of patents will not replicate these benefits and may in fact
distort patent users' incentives to gather information about the
quality of patents.
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here for access via Westlaw [ON CAMPUS]
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here for access via Westlaw [OFF CAMPUS]
'Institutional Nature of the Patent system: Implications for
Bioethical Decision-Making' in Christian Lenk Ed. Ethics and Law
of Intellectual Property: Current Problems in Politics, Science and
Technology, Chapter 13 (Ashgate 2007)
This
book gives an overview of current topics in law and ethics in
relation to intellectual property. It addresses practical issues
encountered in everyday situations in politics, research and
innovation, as well as some of the underlying theoretical
concepts. In addition, it provides an insight into the process
of international policy-making, showing the current problems in
the area of intellectual property in science and research,
highlighting changes in the fundamental understanding of common
and private property and the possible implications and
challenges for society and politics.
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'Patents as Credence Goods' Oxford Journal of Legal Studies
Vol 27, no 4, pp 707-740, 2007
[first appeared in LSE Law, Society and Economy Working Paper
Series, WPS 04-2007 July 2007]
The view of patents as well defined property rights is as
simplistic as it is ubiquitous. This paper argues that in newly
arising or immature technologies, patents are subject to
intrinsic and extrinsic uncertainty that make them very opaque
representations of the underlying inventions. The opacity is a
result of unsettled legal doctrine and scientific terminology,
uncertain commercial and technological prognosis, and leads to
considerable ambiguity in property parameters. Patents in
immature technologies do not solve Arrow’s information paradox
of non-rivalrous goods because they do not represent the sharp
exclusive right that is central to his thesis. In such cases
patents ought to be reclassified in terms of their perceived and
actual function as credence goods. The difficulty in discovering
the value of these patents necessitates credence verifiers,
further increasing the transaction costs of encouraging
innovation. The theoretical and empirical implications of
credence explored in this paper are based primarily on the
Anglo-American legal protection of biotechnological inventions,
but may equally be relevant to patents in other newly arising
technologies.
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‘Understanding Morality as a Ground
for Exclusion from Patentability under European Law’, Eubios
Journal of Asian and International Bioethics 12 March 2002 pp
48-53.
'Database Access Crucial for
Developing Countries' Nature Biotechnology, August 2002, p
775
'Human Genome Research in Developing
Countries: Problems and Proposals' Journal of World Intellectual
Property Vol: 5 No: 5 September 2002, pp 685-723.
Sivaramjani Thambisetty Ramakrishna