The Promise of the Patent in Canada and Around the World (original) (raw)
Related papers
Cybaris, 2012
The requirement that an invention have utility is one of the most fundamental of the patent laws. In the United States, for example, the concept of utility is rooted in the Constitution: Article 1, Section 8, gives Congress the power to grant exclusive rights to inventors in order "[t]o promote the progress of Science and useful Arts. " Other jurisdictions recognize utility in the form of inventions that have "industrial applicability" or are "capable of exploitation in industry," with all of these terms and phrases generally viewed as being synonymous. Historically, nearly every jurisdiction has excluded some type of invention from patentability as lacking utility. A common and enduring utility-based exclusion is the perpetual motion machine, with the justification being scientific: because perpetual motion is not physically possible, an invention which claims such a feature cannot in fact work and therefore fundamentally lacks utility. Jurisdictions also make exclusions on policy grounds. In Europe, for example, methods of treating human and animal bodies are not patentable, but the justification for doing so, which previously was based on lack of industrial applicability, is now expressly linked to public health policy. In an ever-more global economy, inventions are at the heart of commercial transactions that know no geographic boundaries and are increasingly valued for their job and wealth creation. Obtaining patent protection in multiple jurisdictions therefore is increasingly common. At least to reduce costs and increase efficiency, patent owners, policymakers and practitioners alike have sought increased inter jurisdictional cooperation and patent law harmonization in the patent examination and granting process. Recent publications, however, have identified a developing trend in Canada in which Canadian courts and the Canadian Intellectual Property Office are interpreting and applying the historically well-settled and generally harmonized utility requirement in a new and different way, in particular with respect to patents for pharmaceutical products. As a result, applicants for Canadian patents must meet conditions and overcome hurdles not required by other major patent offices. This article will compare Canada's implementation and treatment of the utility requirement with the implementation and treatment practiced in the United States and Europe-two jurisdictions that represent prevailing approaches to utility and also constitute a major share of the world's patenting activity. The article will first examine the statutory and judicial situation in each of the jurisdictions, including a review of the major international treaties and agreements to which each is subject. It will then present a case study that looks at the judicial challenges brought against various members of a single patent family in the United States, Europe, and Canada, and compare the results of those challenges. This analysis, we believe, reveals that the recent shift in Canada's approach to the utility requirement conflicts with international norms and thus presents implications for patentees, patent law harmonization, and international treaty obligations.
Patents, promises and deference to domestic court decisions
2016
El documento analiza los argumentos presentados por la empresa Eli Lilly and Company (Estados Unidos) en la Solucion de Controversias Inversionista-Estado iniciada contra el Gobierno de Canada a la luz del Capitulo 11 (Inversion) del Tratado de Libre Comercio de America del Norte (TLCAN), debido a la revocacion de dos patentes canadienses de dicha sociedad, sobre la base de la no conformidad con el requisito de utilidad. Hasta la fecha esta diferencia esta pendiente de ser resuelta por el tribunal arbitral correspondiente. En primer lugar, se explora el grado de escrutinio que un tribunal de arbitraje posee, en el cumplimiento del TLCAN, especialmente cuando se trata de la salvaguardia de la inversion. A continuacion, se evalua el nivel de armonizacion de los criterios de patentabilidad entre los miembros del TLCAN. Por ultimo, se analiza si los argumentos de la demandante son validos y, por lo tanto, si el tribunal arbitral tiene competencia en este caso o si, por el contrario, es ...
Canada’s laws on pharmaceutical intellectual property: the case for fundamental reform: Figure 1
Canadian Medical Association Journal, 2011
I nnovation-the discovery of ways to get more value from limited resources-is critically important for both society's health and material standard of living. A widely held view is that there would be too little innovation without government support. 1 This view is common in the drug discovery sector, which has faced declining productivity and mounting costs over the last three decades. 2 Governments support drug discovery and development in several ways, including direct and indirect subsidies of basic research, clinical trials and other costs associated with research and development. The most important policy interventions, however, are patents and other forms of protection for intellectual property. Patents provide innovators a period of market exclusivity, during which manufacturers of low-priced generic copies are kept at bay. This allows an innovator to earn more sales revenue than would otherwise be possible; this revenue, in turn, can help cover the costs of research and development. Patents have many limitations, 3,4 and alternative approaches to supporting drug innovation may work better. 5 Nevertheless, it appears that the patent system is not going away any time soon. So, if we are to continue to rely on patents to support drug innovation, we need a low-cost way of ensuring that market exclusivity is being sustained on the basis of valid patents; that is, patents that pass the test of novelty, utility and nonobviousness. We argue that the current system is broken. The adjudication of patent validity (and hence the period of market exclusivity) is determined by extraordinarily costly and time-consuming litigation between generic and brand (i.e., innovator) drug companies. Part of the problem stems from the very complex set of regulations and case law governing the market entry of generic drugs, which has created legal uncertainty. The primary reason, however, is that generic and brand drug companies have opposed interests: brand drug companies wish to maximize the period of market exclusivity, whereas generic drug companies wish to minimize it. Firms will use whatever tools are available to them from the regulations to pursue these goals. In this article, we describe how adaptations by these firms to Canadian regulations have generated these costs. A key policy issue is to determine what tools brand and generic drug companies should be able to use to contest market exclusivity. We propose some solutions. This article has been peer reviewed.
2017
The Access Regime, Patent Law Reforms for Affordable Medicines Ali, Feroz, Oxford University Press, 2016 ISBN-13: 978-0-19-946348-0 Hardcover, pp 263 + xxxviii Price: $60 Danny Friedmann The Republic of India, never a stranger to defining its own path of development,1 realized that different jurisdictions have different needs. The leaders of this populous developing country have made full use of the policy space available to them to make long term decisions to guarantee affordable medicines and create a thriving generics pharmaceutical industry in the process. The book takes the reader from the Indian Patents and Designs Act of 1911 via the Chand and Ayyangar Commitees in the sixties, when medicines were not affordable to most Indians, to the Patents Act 1970 and further. The Patents Act 1970 introduced a prohibition against granting product patents for medicines but allowed process patents for medicines. This prohibition, which lasted until 2005, helped create an indigenous pharmaceutical industry, where generics companies ingeniously worked around patented processes. The generics and active pharmaceutical ingredients were not only in great demand domestically, but also in developing countries that lacked the capacity to manufacture medicines.
The case for permissive patents
European Economic Review, 1989
Whatever its shortcomings in practice, until very recently patent law has sought to embody the winner-takes-all principle. This paper argues that it is both feasible and desirable lo allow multiple prizes. Indeed, it is possible that complete abolition of the patent system, by raising the returns to late finishers, would yield an improvement on the current situation. 'A British court has just decreed that Genentech, a biotechnology company in California, cannot retain exclusive marketing rights in Britain for its heart product, TPA. The judge ruled that the terms of the patent were too broad (.. .) To stop others working (.. .) would stifle research and not be in the public interest. Genentech plans to appeal against the decision. If its patent were to stick, 19 companies would have to abandon their work on their TPAs.' [The Economist, July 18, 19871 *We are grateful to Peter Geraighty, Daniel Seidmann, and two referees for their perceptive comments. 'Well known examples are Dasgupta and Stiglitz (1980), Loury (1979), Lee and Wilde (1980).
Functions and Limits of Patent Law
2009
Patents are a key element of our knowledge based economy. They are meant to operate as an instrument for fostering innovation by generating incentives through the grant of temporary exclusive rights. The present paper starts by describing some major trends in patent law and practice and throws some light on the concerns to which modern patent law gives rise: extension of patentable subject matter, growing attention for patent quality, appearance of patent thickets and restrictive licensing practices, emergence of governance issues such as the North-South divide, increasing influence of “epistemic communities�?, as well as an enlarged role of ethics and of human rights. Some of these trends have led to serious concerns with regard to current patent law and practice and urged competent authorities to launch a patent reform debate (Chapter 1). In aiming at a better comprehension of these trends and concerns, an analytical model has been deployed revolving around the objectives and func...
Challenges to the Patent System
SSRN Electronic Journal, 2011
; In the pharmaceutical industries drug attrition is a mounting problem: I. Kola & J. Landis, "Can the pharmaceutical industry reduce attrition rates?" (2004) 3 Nature 711 [Kola & Landis]. 3 F. Lévêsque & Y Ménière, "Patents and Innovation: Friends or Foes?" (December 2006) Centre d"économie industrielle Ecole Nationale Superieure des Mines de Paris at 3 [Lévêsque & Ménière] (the title belies the multi-faceted study on various aspects of the patent system); R.