Patents
Coke, “Against Monopolies…”
Edward Coke, “Against Monopolies, Propounders, and Projectors” (1797), CB I p. 376
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Monopolies are contrary to “the ancient and fundamental laws”, and are punishable by law
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Recognition that a balance must be struck in rewarding privileges to inventor/new manufacturer (so that the inventiveness may be rewarded and so to encourage others to be inventive) and the public (so that the public can benefit from the invention)
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The protective period should not be too long to protect the private privilege
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Coke lists 7 terms for the manufacturer to comply with in order to obtain a patent: If any of these are missing, the patent will be declared void pursuant to the Act Against Monopolies
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Must be for 21 years or under
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It must be granted to the first and the true inventor
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It cannot be an invention which is already protected by patent
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The privilege cannot be contrary to law. This means it must be a new invention. One cannot obtain a patent for a mere improvement or addition to a patented invention. The invention must be completely new.
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The invention cannot be harmful to consumers. (Prof. Gold states this is usually never enforced)
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The invention cannot be harmful to the trade
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The invention cannot be inconvenient. This means, it cannot put people out of work
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Effectively, there are public policy limits on what can be patented. Lametti argues that all these limitations still exist today.
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Note that this is not a patent act, per se. It didn’t set up a system of registration or anything.
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Sherman & Bentley
Sherman & Bentley, “The Making of Modern Intellectual Property Law” (1999), CB I p. 380
Creativity and intellectual property law
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The common denominator which united patent law, literary property and all areas of law which granted property rights in mental labour was a shared concern with creativity
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Webster – products of the mind or intellectual labour have peculiar claim derived from the nature of the subject matter, which did not exist like land, air and water…it is in the strictest sense of the term, a creation (the rights extended to intangibles of all types)
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Law looked at what it meant to invent or create a machine or a chemical process…the starting point for this analysis was a belief in the existence of a reservoir from which inventions were drawn (some things, created by the “great Author” were outside the remit of what was patentable – i.e. basic science)
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Just as literary property law distinguished between ideas and expression, patentable inventions were put up against non-patentable discoveries (something that existed in nature) – even though much effort goes into the discovery of principles, they cannot be said to have been invented
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How do you move from the realm of discovery to that of invention…necessary to show that abstract principles had been reduced to practise, that nature had been individualised or activated…Watt – patents were granted for some production from these elements and not for the elements themselves (embodiments of abstract principles in a material or practical form)
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What IP law protected was the creative or human element embodied in the resulting product
A Fear of Judgment
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the law began to grow wary of the evaluative process of differentiating products based on quality
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In the 18th and first half of 19th century - law explicitly passed judgment as to the quality of inventions and tried to exclude from its ambit non-deserving creations
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This reached its peak with the introduction of the requirement that the applicant show that the invention was “of great public utility”
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This was because the multiplication of patents was seen as an evil that needed to be avoided – similar examples of the law engaging in this also occurred in copyright and design law
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Questions rose in the middle 19th century about whether it was appropriate for the law to engage in such speculative activities…began to echo modernism’s fear of being tainted by politics, morality and judgment
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Lord Langdale – “cannot imagine any way in which you can distinguish good inventions from bad ones”
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Why did doubts re. the appropriateness of evaluating quality grow? 2 reasons: (1) because of the growing belief that the law was ill equipped to engage in subjective and qualitative decisions; and (2) laissez faire arguments which attacked the idea of regulation that lay behind qualitative judgments
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Law as a result began to distance itself from this – began to leave such decisions to the public and the market
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These calls for the subject matter of IP to be presented in a more stable and closed manner were reinforced by growing demands for IP to be placed in a calculable form…but the problem was that labour and creation were not readily subject to quantification
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It was very hard to measure the amount of labour put into a thing – this move away from labour to the object itself resolved these difficulties – the closed work and the contribution that it made to the economy could be calculated. Move away from the labour embodied in the creation towards the creation itself [i.e. the contribution that it made to the economy]
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These two cases deal with different issues surrounding patentability:
Schlumberger Canada Ltd. v. Canada
Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), [1982] F.C.A., CB I p. 385
Facts:
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Ptf appealed decision of Commissioner to reject its application for a patent
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Purpose of alleged invention to facilitate the exploration for oil and gas. Application discloses process whereby measurements obtained in boreholes are recorded on magnetic tapes, transmitted to a computer programmed according to math formulae set out in the specifications and converted by the computer into useful information produced in human readable form.
Issue: Is this a patentable “invention”?
Held: No invention w/in meaning of s. 2.
Ratio:
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Aplt argues that the invention is not he computer program, but rather the complex process, which is effected by computer, of transforming measurements into useful information. Court rejects this.
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What has been discovered? What calculations need to be made and the math formulae to be used in making them. If those calculations were to be effected by men, not computers, the subject-matter of the application would clearly be math formulae and thus not patentable. A math formula can be assimilated to a “mere scientific principle or abstract theorem” for which “no patent shall issue.”
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If aplt’s contention were correct, mere use of computers to perform calculations, would have the effect of transforming into patentable subject-matter what would, otherwise, be clearly not patentable.
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POINT: Computer programs are not patentable subject matter. They are effectively a collection of algorithms, and thus analogous to abstract theorems or scientific principles (which cannot be patented). Subsequent courts have confirmed that CR is the correct vehicle for protection, and this has been entrenched in international treaties (WTO TRIPs Agreement).
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Notes:
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What is the appropriate mechanism for protection of computer programs?
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Academic commentary suggests that courts should recognize the active or dynamic nature of computer software and thus protect it with patent.
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Business investors underwriting hi-tech companies seem also to prefer patent. CR has longer protection but protects very little (kernel of originality). Patent better insulates from litigation [b/c registration = infringement less likely].
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Note that U.S. courts are beginning to recognize patent protection for so-called “business methods”. This pushes at the envelope – suggests that perhaps courts would be willing to protect the dynamic functionality of software using patent.
Tennessee Eastman Co. v. Canada (Commissioner of Patents)
Tennessee Eastman Co. v. Canada (Commissioner of Patents), [1974] S.C.C., CB I p. 387
Facts:
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Ptf’s claim describes a surgical method for joining or bonding wounds in living animal tissue by applying certain liquid compounds. The discovery that these particular compounds had an unexpected property of bonding human tissue is new and useful and unobvious but the compounds described in the claims are old and well known.
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Patent Commissioner refused to grant patent on grounds that it is neither an art or a process and thus not patentable subject matter pursuant to s. 2(d)
Issue: Whether the method for surgical bonding using well known compounds is an “art or process” or an “improvement of an art or process” w/in meaning of s. 2(d) PA.
Held: No. Methods of surgical or medical treatment are not contemplated in the def’n of invention as a “process”
Ratio:
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def’n of “invention” in s. 2(d) any new and useful art, process,…or any new and useful improvement in any art, process, etc.
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S. 2(d) is subject to s. 41 which provides that, in the case of inventions relating to substances produced by chemical processes and intended for food or medicine, the specification shall not include claims for the substance itself, except when…
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Subject-matter of claimed invention – discovery that this adhesive is non-toxic and such that it can be used for the surgical bonding of living tissues. Claim in this case is limited to a process or a method [court deems them equivalents] which enables a known substance to be used in a new way.
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It is clear that a new substance that is useful in the medical or surgical treatment of humans is an “invention”. Also clear that a process for making such a substance is also an “invention”. In fact, the substance can be claimed as an invention only “when prepared or produced by” such a process [pursuant to s. 41]. But the method of medical or surgical treatment using the new substance cannot be claimed as an “invention”. Since the substance cannot be claimed except when produced by the methods described in the claim, the therapeutic use cannot be claimed by a process claim apart from the substance itself. Otherwise, it would mean that while the substance could not be claimed except when prepared by the patented process, its use, however prepared, could be claimed as a method of treatment. This would be an easy way out of S. 41.
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Court also notes that British patent cases should not be given much weight as there are substantial differences btwn the British and Canadian statutes.
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POINT: Methods of treatment (e.g. surgical; ways in which to combine drugs or substances for human/animal well being) are not patentable subject matter. Public policy reasons behind this. U.S. courts have shown same resistance to protecting treatment methods.
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