TIP Conference Day 1: Introduction to Patents

Posted: February 13th, 2012 | Author: Susan Deefholts | Filed under: Events, Intellectual Property, Patent | Tags: TIP Conference | No Comments »

Monday, February 13, 2012 saw the launch of this year’s TIP Conference, a student-planned series of lunchtime talks around a specific topic relating to Technology or Intellectual Property. This year, the conference is themed around the topic of patents.

Professor David Vaver started off the session “Introduction to Patents” with a question: “What is a patent?”

After discussing the current concept of a patent—a state-granted exclusive right over the manufacture, use or sale of an invention, to its inventor or the holder of the patent, for a period of 20 years from the date of filing—Professor Vaver launched into an engaging history of the evolution of patents through the the centuries, from their early days, when they were still “letters patent” and protected things like playing cards, to the current state of the law.

Today, patents protect machines, methods of manufacture and compositions of matter. In order to establish patentability, an invention must pertain to appropriate subject matter. The invention also must be novel, non-obvious, and useful—in that it is both functional and that it does what the inventor says it does. Patents seek to incentivize the move away from trade secrets, instead encouraging full disclosure of the invention in return for exclusive use, thus allowing for public access to such innovations.

He also touched on the issue of the patentability of higher life forms like mice, which were deemed to be non-patentable. Plants also cannot be patented, however, the individual cells that make up the plant can be patented. The result is that so long as the applications are appropriately drafted, the cumulative effect of the individual patents can functionally result in a patent on the entire plant.

Professor Vaver concluded by touching on other areas of invention and how they challenge the current status of patent law, like computer software, and processes like new methods in business and science.

David Ng of Ridout & Maybee LLP then spoke about the process of registering a patent.

“Claims,” he said, “are key.” They are what allow for patent holders to draw a fence around their invention. Ng went on to point out, however, that these fences are drafted in words, and the must be carefully composed in order to demarcate the boundaries of the patent. The process is usually one of dialogue between the applicant and the patent office and generally involves multiple iterations and revisions, before the patent is granted.

Ng then went on to talk about patent litigation, reviewing the types and forms of litigation that can take place around the issue of patents. From infringement litigation, to declarations of non-infringement and impeachment actions—which are essentially requests for the invalidation of a patent—the different types of action in turn give rise to a range of remedies as well, including injunctions that will provide recourse to the patent holder in the event that the infringer continues his unauthorized use.

He also pointed out that the basic threshold for a finding of infringement only requires that one of the claims be infringed upon. The usual defenses involve either the claim of non-infringement or the claim that the patent itself is invalid. In order to support the claim of invalidity, if the defendant can prove that the invention has been anticipated, or that it is obvious, then this will allow for a finding of invalidity.

Professor Paul Grootendorst rounded out the session, in talking about patents in the context of pharmaceuticals.

“The problem here is that while the number of new drugs being invented is relatively flat, the amount of money pharmaceutical companies are putting into that invention is on an upward curve.” This naturally results in a higher cost for the drugs, because of the high sunk costs of the development.

He went on to discuss the issues around patent protection for pharmaceutical products, including a critique of the standard rationales for providing such protection and erecting fences around potentially life-changing products. This is counter weighted by the high cost of R&D, which is sunk into the challenge of developing the drugs in the first place. Pharmaceutical companies argue that they need patent protection to allow for recoupment of their investment, so they can take action against those who might eat into their market share.

This results in a large amount of litigation around pharmaceutical patent battles—”Which is great if you want to practice patent litigation,” Professor Grootendorst pointed out, “but not so good for the cost of drugs and the consumer.”

He concluded by touching briefly on some of the alternatives and supplements to IP, including reducing the cost of doing the R&D in the first place by subsidizing the front-end for drugs that might not otherwise be developed. Another alternative is to rethink the ways in which R&D is undertaken, and to encourage open source development in a public domain context. This would avoid duplication of effort across research groups.

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