Czy historia się liczy? Wpływ zdarzeń z postępowania zgłoszeniowego na zakres ochrony patentowej

The concept of “user rights” is largely absent from current patent scholarship and doctrine. While various limitations on the exclusive rights of the patent owner have been acknowledged over the years under patent legislation and case law — e.g., experimental use, regulatory approval, exhaustion, implied license and prior use — each of these doctrines is generally treated in isolation and there is no unifying analytical framework that enables the evaluation and further development of such “user rights”. In fact, the above referenced doctrines are generally not even explicitly referred to as “user rights.” All this is in contrast to copyright law, where the concept of “user rights” is deeply embedded in the academic discourse and has been intensively discussed, particularly in the last decade. In this article, I will discuss the importance of developing a unifying concept of “user rights” within the patent law narrative. Among other things, I will demonstrate that the recognition of “user rights” as a central aspect of patent law may enhance the awareness and understanding of consumers of their liberties and privileges with respect to patented inventions; allow better protection of such privileges against patent owners who try to undermine them; and encourage the courts to further enhance such rights, as may be needed from time to time. The need to develop a comprehensive set of “user rights” in patent law is of particular importance in the current era, which is characterized by a high degree of cumulative innovation in many industries and by the emergence of a robust practice of user innovation. As a foundation for the discussion of “user rights,” I will examine the possible justifications for such rights. Although each right has emerged separately to solve a specific need, it is possible to identify certain unifying rationales. As I will demonstrate, “user rights” can generally be justified by the very same economic theories that have been used traditionally to justify the exclusive rights of the patentee. Thus, “user rights” are, in fact, necessary in order to enable the patent system to achieve its prescribed goals. “User rights” can also be justified from other theoretical perspectives, including Lockean arguments and a “personality theory” perspective. After establishing the general theoretical foundation for “user rights”, I will discuss each relevant doctrine existing under current patent law and attempt to contextualize it within the general framework. I will discuss the substance and optimal scope of each right, while delineating the boundaries between them. I will also evaluate whether additional “user rights” — e.g., a fair use right (per O’Rourke’s suggestion) — may need to be adopted in order to accomplish an optimal balance between the various considerations undergirding the patent system. Finally, some general doctrinal questions will be addressed, including the appropriate structuring of “user rights” (i.e., whether they should be structured as mere defenses against infringement or as affirmative rights, which allow users to initiate legal proceedings and request remedies upon their breach) and the extent to which users should be permitted to assign or waive their rights.

This chapter explores the interrelationship between these two basic provisions, both as a matter of general theory and through their development in case law over the past 130 years—which spans multiple eras of technological innovation. It is easy to find cases where patent law appears to move in one direction and antitrust law in the opposite. But as a general matter, this chapter defends the thesis that, as the Federal Circuit has written, “[t]he patent and antitrust laws are complementary, the patent system serving to encourage invention and the bringing of new products to market by adjusting investment-based risk, and the antitrust laws serving to foster industrial competition.” As a descriptive matter, today, this thesis is largely, but not uniformly, respected. More specifically, the central task of this chapter is to note how the concern with monopolization—explicit in the antitrust laws—plays a powerful, if somewhat concealed, role in the articulation of patent law as well. As is always the case, any concern with monopolization is a two-edged sword: It is always important to make sure that monopoly practices do not go undetected, but it is equally important that the doctrines of both patent and antitrust law do not impose penalties for supposed monopolistic practices that ultimately turn out to be procompetitive.

In vivo conversion is a process, often metabolic in nature, wherein one substance, usually a chemical compound, is altered significantly by physiological pathways in the body into one or more different substances. For example, when a patient ingests a therapeutic drug, that drug is often converted by the natural physiology of the digestive system into one or more chemically different metabolites. The end products of in vivo conversion sometimes possess therapeutic efficacy. Many patent applications have claimed such therapeutic metabolites, either as compositions per se or as parts of methods of treatment. Although the USPTO has granted patent claims to such products generated by in vivo conversion of ingested drugs, and courts have noted the eligibility of such products as patentable subject matter, never has a United States court of final appeal upheld such a patent claim as valid, enforceable, and infringed. The unanimity of results in cases involving patent infringement triggered by in vivo conversion is striking. In fact, its very improbability suggests a common underlying explanation for why in vivo conversion does not ever seem to trigger patent infringement. Explanations based on inherency or a lack of evidence provide a satisfactory explanation for only a minority of in vivo cases. The Physiological Steps Doctrine, which suggests that products and processes of in vivo conversion are unpatentable subject matter under U.S. patent law, offers an explanation that spans all in vivo conversion cases. Though the rationales offered to explain the results in a number of in vivo conversion cases are suggestive, there are several advantages for a more explicit recognition of the Physiological Steps Doctrine. Consistent with much international, European, and U.S. patent law, the Physiological Steps Doctrine provides a theoretical underpinning to explain the results in cases involving products and processes of in vivo conversion. This theoretical underpinning not only has explanatory power for interpreting previous case law but is also useful in predicting the outcome of future in vivo conversion cases. In addition, the Physiological Steps Doctrine increases the understanding of where inventions involving human beings, and the biological products and processes thereof, fit within the spectrum of patentable subject matter.

This study presents the main features of patent law in the European Union, the United States and China, with a special focus on patentability. Each patent regime is reviewed in its historical context, exploring the stages leading to the given jurisdiction's contemporary patent law. After mapping the differences and similarities of patent law in the EU, the US and China, possible reasons for the detected divergence and convergence will be explored. This study reveals that the differences in codified patent law between the EU, the US, and China are for the most part a matter of nuance and much of the convergence stems from international harmonization efforts and common historical roots as well as external pressure to convergence in patent law for mainly economic reasons. Whereas patent laws in the EU and US are more established, China's patent law has been moulded into its contemporary form only recently. Differences across the chosen jurisdictions are explained not only by cultural factors but also by underlying theoretical differences in patent doctrine and differing aims of patent protection, as well as the divide concerning the role of statutory law and case law between the common law and Romano-Germanic law.

無可置疑的，專利侵害均等論在專利侵害案件之啟動及適用一直是專利法上頗具爭議的議題，此不以美國法為然，日本、英國及歐陸各國亦面臨同一問題，在我國專利法未來逐漸參考或繼受外國先進的法制而落實本土法體系之同時，均等論之爭議亦勢必將在我國的專利法上發動一番的論辯。均等論一方面從專利權利範圍之保護而論，係屬超越專利請求範圍文義解釋的權利擴張，當其啟動及適用時，令專利權人得享有未經專利審查機關核准的部分權利範圍；另一方面，就專利之公平及適切的角度而言，均等論的創設及承認亦為不得不然，若無均等論之存在，第三人動輒得以就他人之專利內容，修改就專利評價上不重要的元件而實施他人之專利，在無需投入相當之研發成本下，輕易便可躲避專利文義侵害的訴追，享有他人的大部分研究成果。因此，如何在專利的公平保護的法理下合宜地啟動及適用均等論，便為我國專利法下值得關注的焦點。另外，國際間，例如：美國、德國等國，已發展出專利侵害均等論之適用限制，特別是根據專利先前技術或基於「禁反言」法則所形成之限制，其間之合理性及其於我國專利法之可行性，仍值得進一步之探究。 鑑於我國專利法之司法實務尚未建立完整的均等論啟動及適用體系，本文本於專利公平及適切保護的法理基礎，並以比較法的觀點檢討以美國、英國、德國及日本為主關於均等論之相關議題，嘗試建立一套最適的法律模式，以供未來立法之參考及司法實務於個案上之斟酌運用。

Business has always been driven by ingenuity and innovation. Now, more than ever, with an economy built on knowledge work and intangible value, developing—and protecting—intellectual property is vital for individuals and organizations alike. This book presents a brief but thorough survey of U.S. patent law, presented in the clearest possible terms for nonspecialists—including scientists, engineers, business managers, and entrepreneurs—as well as students and practitioners of patent and intellectual property law. Drawing from both practical and academic experience, Alan Durham explains the basis of patent law and covers such topics as the application process, claim interpretation, the requirements of novelty and non-obviousness, disclosure requirements (such as enablement and best mode), and infringement—including infringement under the controversial doctrine of equivalents. Complex legal issues are explained through in-depth examples, many borrowed from actual cases, and feature such timely topics as patent protection of computer software, business methods, and biological materials. This revised and updated edition discusses recent developments in the law and draws from the most current case authority. Used as an introduction to the topic or a handy desk reference, this book will be an indispensable guide to the dynamics and mechanics of patent law. Durham illustrates complex legal issues through dozens of in-depth examples, many borrowed from actual cases. Of particular interest are cases involving patent disputes over computer software, business practices, and biological materials. From building a better mousetrap to building a better mouse,Patent Law Essentialsdefines the coverage and limitations of patent law and its protections, and shows how they are applied in the courts and in practical application. This revised and updated edition discusses recent developments in the law and draws from the most current case authority. Used as an introduction to the topic or a handy desk reference, this book will be an indispensable guide to the dynamics and mechanics of patent law.

Contents: Introduction Inventing Life: Intellectual Property and the New Biology Alison McLennan and Matthew Rimmer PART I: A HISTORY OF BIODISCOVERY 1. Of Plants, Pills, and Patents: Circulating Knowledge Eva Hemmungs Wirten PART II: MEDICINE, BIOTECHNOLOGY, AND GENOMICS 2. Bilski v. Kappos and Biotechnology Patents: Back to the Future? Yann Joly and Francis Hemmings 3. The Current State of Patent Eligibility of Medical and Biotechnology Inventions in the United States Joshua D. Sarnoff 4. Patent Law, the Emerging Biotechnologies and the Role of Language in Subject Matter Expansionism Graham Dutfield PART III: BIOBANKS, BIOINFORMATICS AND BIOBRICKS 5. Standards for Biobank Access and Intellectual Property Dianne Nicol and Richard Gold 6. The 1000 Genomes Project Donna M. Gitter 7. Building with Biobricks: Constructing a Commons for Synthetic Biology Research Alison McLennan PART IV: GENETICS, STEM CELLS, AND NANOTECHNOLOGY 8. Regulating Gene Regulation: Patenting Small RNAs Adam Bostanci, Jane Calvert and Pierre-Benoit Joly 9. Stem Cell Patents: Looking for Serenity Amina Agovic 10. Cosmo, Cosmolino: Patent Law and Nanotechnology Alison McLennan and Matthew Rimmer PART V: BIODIVERSITY, FOOD SECURITY, AND CLIMATE CHANGE 11. Patenting The Kakadu Plum and the Marjarla Tree: Biodiscovery, Intellectual Property and Indigenous Knowledge Sarah Holcombe and Terri Janke 12. Climate-Ready Crops: Intellectual Property, Agriculture, and Climate Change Matthew Rimmer 13. The Doomsday Vault: Seed Banks, Food Security, and Climate Change Matthew Rimmer Bibliography Index

This chapter tells the story of how intellectual property lore becomes law. In the United States radical patent law reform has time and again occurred through the Supreme Court selectively reviving and reconstructing its precedent to correct abuses of the patent system. The forgotten opinions the Court draws from are themselves historical constructs from prior periods of patent thickets and corrective judicial reform; just as all common law judicial opinions are rhetorical constructs that purport to objectively present facts that can only be selectively reconstructed and draw conclusions of law that are necessarily subjective and policy driven. Part 1 explains that although the United States has always had patent laws passed by Congress, they have been common law enabling statutes that codified existing judge-made law in broad strokes, leaving it to the courts to create the detailed rules going forward through judicial opinions. Part 2 describes an historical pattern of abusive patent thickets growing in the U.S. to impede true innovation, the failure of Congress to act effectively to address the problem, and the Supreme Court enacting radical and effective patent litigation reform through case law. Part 3 begins by telling the story of how an intermediate appellate patent specialist court, the U.S. Court of Appeals for the Federal Circuit, was created in the early 1980s to unify patent common law and to strengthen patent rights in the face of a judiciary that was perceived as hostile to patents. Part 3 continues by describing how the Federal Circuit’s rulings contributed to the creation of a new patent thicket whereby non-practicing entities and other patent holders asserted low-quality patents to force settlements out of innovators, thereby imposing a private tax on innovation. Part 3 concludes by describing how the Supreme Court addressed these abuses of the patent system through common law reform grounded in the unearthing of forgotten judicial precedent from prior periods of common law reform in the late 1800s and early twentieth century. Part 4 probes the question of what motivates judges to enact common law reforms in different policy directions and explores whether such a system is less democratic than a highly codified civil law system or congressional legislative reform. The conclusion concedes that the history presented in this chapter is necessarily a constructed metahistory based on literary storytelling, as are all historical narratives; and as are all common law judicial opinions because they construct deceptively objective arguments through the interpretation of past judicial opinions, which are themselves mere constructs. Once having accepted this postmodern insight, the metamodern attitude is to seek out how to use such human constructs to promote social good, rather than harm.

Human rights' limitations in patent law

Surgical methods are among excluded subject matter from patentability in most countries’ patent laws. However, due to rapid advances in scientific discoveries in medical and biotechnological fields, the variety of inventions related to surgical methods are notably increasing. This has given rise to the difficulty in determining the scope of the patentable inventions, and inconsistency in European case-law. Here, one of the reasons behind such disparity in decisions is the difference in the courts’ interpretation about the Ratio Legis of excluding surgical methods. While some courts consider the nature of such methods as the reason for this exclusion, others regard their purpose in maintaining life and health of the human or animal as the reason. This Article tries to analyze the complexities of the patentability of surgical methods by examining the case-law main approaches and recent developments related to such methods.

German law has long been known for one of the strongest frameworks for injunctive relief worldwide. In view of this tradition, the 2021 introduction of a proportionality defence in Section 139(1) Sentence 3 of the German Patent Act (Patentgesetz) garnered significant attention in the legal community. Although the new provision has been discussed at length, Section 139(1) Sentence 3 PatG has not yet gained practical significance in case law. This article argues that the proportionality defence must be interpreted and applied in conformity with EU law. From the perspective of EU law, the proportionality requirement is a general and mandatory limitation for all remedies under Directive 2004/48, including injunctive relief in patent law. Member States and their courts may not derogate from the proportionality requirement, not even in favour of the right holder. It is doubtful whether the restrictive application of the principle of proportionality by German courts in patent law injunction cases is compatible with EU law. These doubts concern the balancing of several conceivable aspects of disproportionality and the requirement of an overall assessment of all circumstances in the reasoning of the courts. The doubts also concern the presumed priority of the FRAND defence over Section 139(1) Sentence 3 of the German Patent Act with respect to complex products. The assessment of individual aspects of the proportionality requirement by the German courts is also not free from doubt. This relates to spill-over effects of injunctions if patent protection concerns only a subordinate part of a larger product. Moreover, the criteria of the abuse of rights threshold for non-practicing right holders and the significance of subjective elements in the proportionality test are uncertain. In view of the uncertainties regarding the impact of the EU principle of proportionality, national courts should refer the points mentioned to the Court of Justice of the European Union (CJEU) where they are relevant for the outcome of the case. Due to the high requirements for a finding of an acte clair, a court of last instance is obliged to refer these points to the CJEU.

ABSTRACTThe number of patents and patent applications related to inventions based on biological material from the Antarctic is increasing. Bioprospecting in the Antarctic is happening with no explicit regulation of property rights or benefit sharing requirements. This leaves patent law as the only legal system to establish exclusive rights to genes, bacteria, and other biological material found in the Antarctic. Patent law is general in form and is applied to all areas of invention with very few adaptations to single fields of innovation. Therefore, it is interesting to identify the issues in patent law in cases in which the biological material from the Antarctic is likely to create challenges or loopholes. The aim of this article is to couple the understanding of this particular legal regime and of biological circumstances in the Antarctic with knowledge of the international patent system for the purpose of contributing to the work of the Antarctic Treaty Consultative Meetings (ATCMs) regarding bioprospecting in the Antarctic.

The ownership of preexisting genes and other biochemicals raises important questions about the scope and purpose of patent law - what it is designed to accomplish and how biotechnology fits within that design. More fundamentally, whether patent law is properly applied to products not independently created by a patent applicant implicates questions about the limits of intellectual property ownership, policy decisions about whether natural substances and processes should reside in the public or private sphere, choices about the value placed upon publicly available knowledge, and the microeconomic effects of limiting patents to some kinds of biotechnological innovations while excluding patents on others. Are patents on naturally occurring phenomena, such as discovered DNA sequences, proteins, plasmids, and other biological chemicals, truly as uncontroversial and "simply necessary" as a matter of public policy as many legal commentators, the biotechnology industry, and the Patent and Trademark Office Director himself have argued? Are patents on naturally occurring substances of any kind authorized by the relevant legislation and case law? The answers are far from obvious, and their importance merits a more careful and detailed examination of the legal and policy underpinnings of the patenting of genes and other biotechnological innovations than has so far been undertaken. This Article provides the first comprehensive examination of this issue. The authors argue that the strong recent trend in the case law and literature toward viewing gene patents as uniformly desirable and legally proper rests upon a prevalent misinterpretation of a triad of key patent law concepts.

NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE A. PRIMARY AND SECONDARY LAW 1. Primary law The Directive 2004/48/CE on the enforcement of intellectual property rights (hereinaft er the “Enforcement Directive”) was implemented in Luxembourg by the law of 22 May 2009 (hereinaft er the “Law of 2009”) which amended both the law of 18 April 2001 on copyrights, neighbouring rights and databases rights (hereinaft er the “Copyright Law”) and the law of 20 July 1992 amending the rules on patents (hereinaft er the “Patent Law”). As well as amending the Copyright and the Patent Law, the Law of 2009 also contains a set of independent provisions (Art. 20 to 30) about evidence preservation (Art. 7 of the Enforcement Directive) and provisional and precautionary measures (Art. 9 of the Enforcement Directive). Those provisions are incorporated by reference into the Copyright and the Patent Law. Regarding trademark and design rights, it is worth noting that the Enforcement Directive was implemented by the Benelux Convention on Intellectual Property (hereinaft er the “Benelux Convention”). 2. Secondary law No secondary law has been adopted in Luxembourg regarding the transposition of the Enforcement Directive. B. TRANSPOSITION ISSUES As the Enforcement Directive was only transposed in Luxembourg by the Law of 2009 while the deadline for transposition expired on the 29 April 2006, the Grand Duchy of Luxembourg was condemned by the Court of Justice of the European Union for its failure to transpose the Enforcement Directive within the prescribed timeframe. The Grand Duchy of Luxembourg did not deny the failure to comply with the set deadline, but argued that, given the infl uence of Belgian and French legislations and case laws in the field of intellectual property rights in Luxembourg, it was necessary to wait for both the French and Belgian transpositions before implementing the Enforcement Directive in Luxembourg. In this regard, it is worth noting that the Law of 2009 is similar (if not identical) to the wording of the Belgian transposition of the Enforcement Directive in many regards. JURISDICTION AND COMPETENCE A. COMPETENCE OF LOCAL COURTS Competence of local courts for copyrights, neighbouring rights and databases rights legal issues (Art. 79 and 81 of the Copyright law, Art. 23, 27, 28 and 29 of the Law of 2009): – The “Tribunal d'arrondissement” of Luxembourg is competent to conduct fi rst-instance proceedings.

This paper investigates the existing case law on reverse-payment settlements from a comparative perspective, focusing on the US and EU panoramas. In this respect, we will illustrate the emergence of patent-related proxies in the anticompetitive assessment, which contaminate the antitrust benchmarks in a problematic way, with the effect of hampering patent law and policy. Primarily we will delve into seminal decisions in the EU framework. In this regard we will observe how the Court of Justice of the European Union (CJEU) shifted from a quick-look approach towards a case-by-case antitrust analysis of patent settlements, progressively neglecting, but not eliminating, patent-related presumptions. Then we will look at the fragmented US case law scenario. We will explore the various benchmarks deployed to challenge these agreements, highlighting the differences and similarities with the EU approaches. It will be concluded that a strong IP-law-based perspective about these agreements has arisen in both legal systems. This perspective orientates the anticompetitive assessment through quasi-absolute presumptions, hindering the consistency of competition law remedies and misrecognising the cruciality of patent law and policy. Therefore, we will try to outline that the intermingling of criteria adopted to scrutinise reverse-payment settlements and similar over-exclusionary strategies is pernicious under both antitrust and patent law.