'Alice and ‘something more’: the drift towards
European patent jurisprudence' Journal of Law and the Biosciences (2016)
Jenny, Frédéric and Lianos, Ioannis and Hovenkamp, Herbert
and Marshall, Frances and Thambisetty, Sivaramjani (2013) 'Competition law,
intellectual property rights and dynamic analysis: towards a new institutional
“equilibrium?"' Concurrences, 2013 (4). 13.
The emphasis put on innovation as the common
objective of intellectual property law and competition law, and
consequently the shift of focus towards the dynamics of economic
change, may well be a leitmotiv in recent policy documents and
scholarly comment. By focusing on the strengths and weaknesses of
the different enforcement institutions of IP and competition law
(courts, patent and trademark offices and competition authorities)
in performing the necessary balancing of dynamic and allocative
efficiency this special issue takes an original perspective on the
interaction between these two areas of law.
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'Textualisation as Mode of Persuasion for Patent Law and What
it Means for Legitimacy' LSE Law Working Paper Series, 07-2015
Patent law is rife with apparently inexplicable
outcomes that only make sense within hyper-contextualised domains.
The scale and degree of such outcomes warrants a closer look at the
text of patent law – in this paper, the text of patent Examination
Guidelines. These guidelines – an intermediary product of legal,
judicial and quasi-judicial decision-making – convert contested
legal standards into acceptable claim language that is arguably the
very nub of patent law. Using the examples of diagnostic methods,
Swiss-type patent claims and industrial application of gene patents,
I demonstrate how language is compacted and abstracted in a process
that ‘textualises’ substantive meaning. Textualisation in patent law
is a system of persuasion that does not use semantic meaning to
communicate and influence, relying instead on rhetorical modalities
to frame contested legal positions and prevail. The ensuing
difficulty in comprehending the law is a potential threat to
legitimacy, while conversely facilitating agency and power in patent
systems.
Working paper:
click here to download full text [SSRN] | [LSE
COPY]
'Novartis v Union of India and the Person
Skilled in the Art: A Missed Opportunity' Q.M.J.I.P. 2014, 4
(1), 79-94
The Indian Supreme Court’s (SC) decision in
Novartis v Union of India (UOI), decided earlier this year,
formalizes a concerted and focused attempt by Indian law-makers to
reject trivial secondary pharmaceutical inventions. The SC concluded
that S 3(d) of the Indian Patents Act made new forms of known
substances ineligible for patents in the absence of ‘enhanced
efficacy’, which in this case was defined as ‘therapeutic efficacy’.
This paper argues that the SC wrongly ignored the context of S 3 and
Chapter II of the Act, which is a medley of exclusions, exceptions
and ineligible subject matter, each of which can be differentiated
by the need to involve the person skilled in the art standard. In
this case a greater appreciation of the flexibility afforded by this
notional standard as part of a broader non-obviousness enquiry would
have led the SC to a more conventional and legitimate legal option.
Instead the SC’s adoption of the patent eligibility route has
paradoxically left it much less room to manoeuver the law around
secondary pharmaceutical inventions.
Working paper:
click here to download full text [SSRN] | [LSE
COPY]
'The learning needs of the patent system and emerging
technologies: a focus on synthetic biology'
Intellectual Property
Quarterly 2014 (1) pp.13-39.
Considers, with reference to synthetic
biology, the learning needs of the multi-institutional
patent system in respect of emerging technologies.
Discusses how the system's opacity and institutional
complexity impede decision-making, how its learning
needs are likely to develop in respect of synthetic
biology, and how the mechanics of patent law might be
improved without adopting rigid normative positions.
Examines key features of synthetic biology likely to
determine how legal complexity is managed in future,
including its integral multi-disciplinarity and its
sharing of innovation platforms.
click here for access via Westlaw [ON CAMPUS]
click here for access via Westlaw [OFF CAMPUS]
'The Evolution of Sufficiency in Common Law' LSE Law,
Society and Economy Working Paper Series (WPS 6/2013)
The requirement of disclosure in the patent
specification is commonly presented as an essential arm of the
patent bargain. This paper tests the assumption that disclosure
requirements in a number of common law jurisdictions continue to
reflect this and other shared origins of this doctrine. Instead we
see forces such as Europeanisation and sector-specificity produce
divergence and confusion over the purpose of sufficiency,
particularly in the context of adjacent patentability criteria such
as utility and nonobviousness. The result is a complex expression of
this requirement that has eroded the normative strength of this
doctrine as originally expressed in
Liardet v Johnson.
click to download from SSRN
‘The Analytical Significance of Emergence in the Patent
System’ (Nuffield Bioethics Council Study on Emerging Biotechnologies)
[FORTHCOMING]
'Generativity and Synthetic Biology'
Biosocieties 2011[FORTHCOMING]
Editor, Biotechnology and Intellectual Property Rights’
Research Handbook (Edward Elgar, under contract) [FORTHCOMING]
‘A Cognitive History of Patent Law’ [FORTHCOMING]
'Patent litigation in the United Kingdom: solutions in search of a
problem?'
European Intellectual Property Review 2010, 32(5), 238-246
'SMEs and patent litigation: policy-based evidence making?'
European Intellectual Property Review 2010, 32(4), 143-145
‘Legal Transplants in Patent Law: Why Utility is the New
Industrial Applicability’ (LSE Law and Society Working Paper, 06/March
2008); 49 Jurimetrics J 155-201 (2009)
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.
click here for 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) 211-237.
'Sufficiency of Disclosure in the Common Law: Complexity, Divergence
and Confusion' in Bentley, Ng and D’Agosino Ed The Common Law of
Intellectual Property: Essays in Honour of Professor David Vaver
(OUP 2010)
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.
click here for access via Westlaw [ON CAMPUS]
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'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.
