Intellectual Property Law - Essay Example

INTELLECTUAL PROPERTY LAW This Paper starts with a brief of the basic elements of patent law and then goes on to describe the concept of prior art and its relevance. The industrial property is an overall of legal titles which assure a company the monopoly to use products or elaboration process, aspects of those products, distinctive signs that serve to differentiate them. Those titles confer exclusive rights, each of them incorporated in one document (called patent or registration) issued by a public Agency after an exam of legal requirements fulfilment. The requirements necessary for inventions are novelty and originality, in case of trade marks it is the distinctive capacity of the sign and for designs, it is an individual character of the product in relation to overall impression it produces for the public. Patent and registration have a constitutive effect because they confer the right to exclude others from making or using the same goods or signs protected with such legal instruments within the territory of the State which has granted such titles. The object of a patent consists in invention which is the solution of a technical problem and is characterised by originality, novelty, nonobviousness, industriality and can consider a product as well as a process. The patent allows an inventor to exclude others from making, using or selling a claimed invention during the patent’s term which runs for 20 years from the filing date. The patent object can also be constituted by (industrial) model of utility – known only in some of European countries – and concerns solutions that attribute machines, their parts, instruments or tools a particular efficiency or utility in order to their use (so called small invention).1 From the times of John Locke, man has debated the importance of quantifying and protecting knowledge and skills while also trying to ensure that mankind in general can benefit out of the achievements of individuals2 .Patents were the answer they found and it is the dual purpose of promoting knowledge while protecting the creator which govern the principles of modern day patent law. This is possibly why a requirement of novelty in invention is an absolute prerequisite for patentability. Novelty and non-obviousness are the two most important requirements for patentability and " No system grants valid patents for inventions that are already known: that would be to encumber industry with constraints upon the use of information without any sufficient return. Accordingly the present law requires a patented invention to be new in the sense of forming no part of the state of the art". Both the English Patents Act and the European Patents Convention, patentability of inventions requires the invention to be novel and unobvious. Therefore, it is absolutely essential for a Patentable invention to be absolutely ‘new’. An invention is said to be new if it does not form ‘state of the art’ at the time of application for patent.3 Therefore, once the technical features are identified, it is necessary to ascertain the nature of the information that has been disclosed by the prior art. In order to follow this, it becomes essential to figure out what material forms part of the state of the art? Once this has been ascertained and the prior art which is relevant to the invention in question has been identified, it then becomes possible to determine the nature of the information which is disclosed by the prior art. State of the Art The ‘state of art’ is defined broadly to include all matter that is available anywhere While this qualitative requirement can be said to be a monopolistic step , ‘novelty’ is a requirement aimed at creating information symmetry and to help create a permanent resource base for sharing of knowledge . in the world before the priority date of the invention .Where an invention is disclosed or anticipated by the ‘state of the art ‘ but has escaped the examiner, even then such patents are liable to be revoked .’Novelty ‘as a requirement wants to ensure that the technical details disclosed by the patent is taken into consideration and are not such that they have already been disclosed to the public. Therefore , novelty is a quantitative requirement while ‘ non-obviousness’ is a qualitative one , as it makes existence of an inventive step a pre-requisite for a successful patent application . 4 Before delving into the justifications and criticism of the “state of art” rule , we must understand the objectives behind patenting in itself . Patents-Definition and Justifications Lionel Bentley defines patent in the simplest of terms yet very effectively in the following way: A patent is a limited monopoly that is granted in return for the disclosure of technical information so that it can be used or worked on by a ‘person skilled in the art’. There are several theoretical justifications behind supporting patents and a few of them have shaped the drafting in this field of law. Proponents of patent protection insist on the natural rights of inventors to the product of their mental labour. There are others who believe that an inventor’s contribution should be recognised by the grant of a reward. While natural rights have often been used as a justification behind the present patent regime, the more common and acceptable rationale has been the huge amount of public benefit accrued from an organised information base for technical development. The idea behind this is to ensure that inventors get the advantage of creation by having the exclusive right of commercial exploitation of his investments while at least forcing them to disclose process oriented discussions .Lord Oliver said in Asahi ‘ the underlying purpose of the Patent system is the encouragement for improvement and innovation .In return of disclosing his methods to the public , he receives the advantage and freedom over the period of education ‘. Therefore, there is no doubt over the need for a definite proof of novelty for this act. Now, the question that begs attention is whether credit –ratings can be used to take corn of loans an own chapter . By ensuring that patents are not granted for products or processes which are already known, novelty helps to ensure that patents are not used to stop people from doing what they had already done before the patent was granted. Prior to the 1624 Statute of Monopolies, the Crown granted patents for activities which had already been carried out. One of the most infamous examples being for the buying and selling of playing cards. This meant that those who were already practising the activities could no longer continue to do so. Not surprisingly, such persons were aggrieved.5 As we will see, this so-called right to work argument has been modified as a result of changes in the way novelty is determined.6 Another factor that is used to justify the novelty requirement relates to the overall rationale for grant of patents. At the EPO, the purpose of the novelty requirement is to prevent the prior art from being repatented;7 More specifically, it is argued that the public is willing to pay the costs (or monopoly profits) of patenting if, and only if, they are able to get access to information that would have otherwise not been available to them. To adopt the contract analogy that is often used to justify and explain patents, novelty ensures that the inventor provides the consideration necessary to warrant the patent being granted in the first place. A few other terms are needed to be looked into before entering into a detailed study of the various issues involving ‘state of art’ concept today .First what exactly is an invention and then more importantly what is ‘state of the art’? Invention & State of the Art Before being in a position to determine whether an invention is new, it is first necessary to identify what the alleged invention is.8While the way an invention is characterized often plays a key role in shaping many aspects of the novelty examination and consequently the fate of many inventions9, it has received very little attention. Nonetheless, it is an issue that should always be borne in mind. The state of the art is defined in extremely broad and inclusive terms to include all matter (whether a product, process, information about either, or anything else) which, at the priority date of the application in question, has been made available to the public (whether in the UK or elsewhere) by written or oral description, by use or in any other way.10 There are a number of features of the way in which the state of the art is defined which should be borne in mind. No geographical limits There are no geographical limits placed on where the state of the art must be disclosed. As such, it includes information that is available anywhere in the world. No restrictions on the mode of disclosure Information will become part of the state of the art irrespective of the way in which it was made available to the public. Consequently, information may become part of the state of the art as a result of written descriptions (such as prior published patents or journal articles) this includes a magazine available to the public one day before the priority date, but not a doctoral thesis which has been placed in a library archive and yet to be indexed,11through prior uses,12 exhibition, sales,13 or by oral communications (although in the latter case difficult evidential questions may arise).14 If the information is accessible, then its age, obscurity, duration, language or location is irrelevant.15Similarly, there are no minimum requirements on how widely the information must be published for it to be disclosed. Thus, a single copy of a document, or the sale of a single item will be sufficient for the information to become part of the state of the art.16 For eg: where a publication placed in the hands of salesmen was held to have been made available to the public, since there was no fetter on their use of that information. However, supply to a manufacturer is likely to be treated as in confidence. Potential rather than actual disclosure Material is factually available (and part of the state of the art) if it is open to or capable of being accessed by the public. As such, there is no need to demonstrate that anyone actually had access to the information in question: all that matters is that if they had wanted to, they could have accessed the information.17 Priority date Both the 1977 Patents Act and the EPC provide that the date at which the novelty is to be assessed is the ‘priority date’ of the invention in question.18 The upshot of this is that the state of the art only includes information that is made available to the public before the priority date of the invention in question. While the priority date is normally the date on which an application was filed,19 in some cases the priority date is calculated from an earlier date20 (notably where an application is made in the previous twelve months in a Paris Convention country). In contrast with some other patent regimes, 21 applicants for UK and European patents are not provided with a ‘grace period’, that is a period prior to filing in which they are able to practise their inventions.22 More recently the Intergovernmental Conference of Member States of the EPO called for the EPO to examine the conditions under which a grace period should be introduced into the EPC.23 Consequently, patents are frequently anticipated and thus rendered invalid for want of novelty as a result of the applicant’s own acts and disclosures.24 The priority date is thus not only important because it is the date from when inventors are able to exploit their inventions without jeopardizing any potential patents.25 Moreover , in the USA, experimental use will not invalidate a patent even though the invention was in public use or on sale more than a year before the priority date. Material specifically included within the state of the art While as a general rule patent law provides that the state of the art only includes material in the public domain before the priority date of invention, an exception is made in relation to patent applications that are published after the priority date of the application in suit. More specifically, the relevant laws provide that in addition to the matter published before the priority date of the invention, the state of the art also includes patent applications (for other patents) that are published after the priority date of the invention in question, but nonetheless have an earlier priority date than the application in question.26 There are specific material which are considered to be within the public domain and therefore within state of art. It must be remembered that not just the patent applications published before the priority dates but also those after it before examination fall within state of art as long as these applications have earlier priority date than the applications in question.27 Art.54(3) does not treat prior national rights as part of the state of the art, so that a European patent (UK) would be granted at the EPO but not in the UK where the prior national right would anticipate. There are however two situations where material in public domain is not considered while deciding on novelty. One, where the material has been brought to public domain unlawfully or was disclosed as a result of a breach of confidence.28 Relevant examples include disclosure by employees,29 submission of an article to a referred journal30 and disclosures at a meeting with a manufacturer.31 In a sense this reaffirms the old principle that material is only available to the public if the recipient is free in law and equity to divulge its contents.32 Two, where the disclosure was due to displaying of the invention in some international conference or exhibition by the inventor himself.33 (‘International exhibitions’ are defined in PA s. 130 and EPC Art. 55(1)(b) as relating to the Convention on International Exhibitions at Paris in 1928). It is pertinent to mention that the exclusions only apply to disclosures that are made in the six-month period immediately preceding the date of filing of the invention in question.34According to the EBA, under EPC Art. 55 (1) the ‘relevant date is the dateof the actual filing of the European patent application; the date of priority is not to be taken into account in calculating this period.’ Any disclosures that are made outside of this period will not be caught by the exceptions and will thus form part of the state of the art for the purposes of assessing novelty. We shall now discuss ‘state of art’ within the various fields and problems surrounding it. Claims Construction and State of Art In case of claims construction and methods to determine state of art ,one should recall that Markman hearings conducted by judges, in advance of infringement trials, attempt to construe claims from the perspective of the POSITA( person of ordinary skill in the art) and "in view of the state of art at the time of the invention."35 However, as judges are not experts in all areas of technology, it might become necessary for them to hear testimony from experts in the technology.36 Experts may offer conflicting evidence with respect to who qualifies as a POSITA, what the state of the art was at the time of the invention, the meaning of particular terms to a POSITA, the bounds of the relevant art, the problem sought to be resolved, etc.37 Accordingly, the judge must carefully consider and weigh the conflicting evidence to arrive at a reasonable construction of the claim in dispute.38 The process, as described above, stands in stark contrast from the Markman I majoritys characterization where the judge is "not crediting certain evidence over other evidence or making factual findings."39 As such, "when the Federal Circuit Court of Appeals states that the trial court does not do something that the trial court does and must do to perform the judicial function, the court knowingly enters a land of sophistry and fiction." 40 Markman v. Westview Instruments, Inc. (Markman I) The first Federal Circuit case to overturn this deferential standard was Markman v. Westview Instruments, Inc. (Markman I) wherein the majority held that claim construction was a matter of law to be reviewed de novo on appeal.41 The majority bolstered its holding by offering that the United States Supreme Court has consistently recognized claim construction to be the sole province of the judge.42 Although Markman I recognized that the court may use extrinsic evidence when construing claims, it deemed the use of extrinsic evidence in this context as merely assisting in the construction and "not crediting certain evidence over other evidence or making factual evidentiary findings."43 Finally, the majority justified its holding by insisting that treating claim construction as a matter of law will bring stability to the area of patent litigation, as litigants will be assured that a trained judge, not a novice jury, is analyzing the claims and applying the cannons of construction. 44 In his concurring opinion in Markman I, Justice Mayer disagreed with the majority and argued that the court should validate its precedent that claim construction "is a matter of law depending on underlying factual inquiries."45 Further, he countered the majoritys invocation of the United States Supreme Courts view that claim construction is the province of the court.46 He further stated that the Court has also been unequivocal in its position that claim construction depends on a factual resolution. Markman v. Westview Instruments, Inc. (Markman II) In Markman II, the United States Supreme Court was called on to address whether the Seventh Amendment right to a jury trial meant that claim construction was a question for the jury or the judge47. In writing for a unanimous Court, Justice Souter wrote that neither history nor precedent provided "clear answers" to the question.48 Rather, relying on a functional argument that judges, not juries are better equipped to resolve disputed claim terms, Justice Souter concluded that claim construction should remain the province of the court.49 In further supporting the Courts holding, Justice Souter noted that because the Federal Circuit was created to bring uniformity to patent jurisprudence, this purpose would be ill-served if the claim construction were submitted to juries. 50 Fair Use and State of Art Judicial development of the fair use doctrine is best understood by analyzing the utilities of the allegedly infringing works that were at issue before the common law courts. The first Copyright Act51 in the United States did not explicitly identify welfare principles, such as fair use, perhaps because the entire copyright system was understood to be a form of welfare grant.52 American courts nevertheless recognized and applied the common law fair use doctrine, which was then codified in the 1976 In the seminal fair use case, Cary v. Kearsely,53 involved facts very different from the abridgement cases. In Cary, an author alleged infringement when a book written by the defendant provided readers with the same information as the authors book addressing the same subject matter.54 It identified five elements of the fair use defense, including: (a) the nature and objects of the selections made; (b) the quantity and value of the materials used; (c) the degree to which the use may prejudice the sale of the original work; (d) the degree to which the use may diminish the profits of the original work; and, (e) the degree to which the use may supersede the objects of the original work. The court noted that although some factual subjects were susceptible to reproduction of the same information, the defendant in Cary at least made some changes to the authors work55 In analyzing the case, the court did not refer to the elements outlined in Folsom.56 Instead, the court addressed the issue of intent (animus furandi) and determined that where the purpose of copying was to produce a new intellectual work rather than masquerade as original what already was available, the defendant was free to use the prior protected work.57 The court in Cary seemed to imply that intentional infringement could rise to the level of a criminal offence. Once the court determined that copying was not illegal per se and that the nature of the new work merited the use of a pre-existing work, the issue before the court ceased to be a question of infringement. It is possible to attribute the courts emphasis on exact duplication as a prerequisite for a finding of infringement, to the absence of widespread use of duplicating technology and to the state of copyright law which, at the time, granted authors the exclusive right to copy. However, the courts discussion of fair use militates against an unequivocal conclusion that the decision is best explained by the state of art and law; the court found affirmatively that certain works of authorship may tend more than others to necessitate use (whether in the purely teleological sense or by incorporating prior work) of what another author has produced.58 The Court in this case held that some similarities and uses of prior works, even the copying of some parts, are tolerated for certain types of books. State of art is indeed one of the most crucial concepts in novelty of an invention and the reason why such a concept has been made a part of law are found in Locke’s jurisprudence of rewarding an inventor for his skills and creativity and also due to the need to create information symmetry among people which eventually helps the market attain a level playing field. Conclusion There can be no doubt that patents are essentially protections to inventors in order to allow them to make economic benefits out of the system and out of their creations .When the law was evolving in England , initially ( to be fair till as late as 1906) there was no requirement for examination before granting of patents .This meant there were several patent holders for the same invention and that destroyed the exclusivity and value of a patent .The reason behind not having examination was that it was perceived to be over interference by the State in matters of property .But , soon in the market , due to existence of multiple patent holders for the same item, the value and goodwill of patents fell and competition became unfair . This was a trend which would hover produced great pirates but few inventors and therefore, the state of art test and the entire process of examination came into existence .this is crucial today as now-a-days costs involved with research and development are so high that there needs to be an incentive for people who are willing to invest great magnitude of time, money and skills. The test is crucial but as has been shown in the Claims construction section of this paper, such test can lead to a lot of factual discretion in the hands of the Courts. Therefore, it is concluded that State of Art test in patents law form an integral part of modern Patents law especially due to its economic implications. " No system grants valid patents for inventions that are already known: that would be to encumber industry with constraints upon the use of information without any sufficient return. Accordingly the present law requires a patented invention to be new in the sense of forming no part of the state of the art".—topic question. Therefore, it is finally concluded that the topic question is right in all types of patents law in various parts of the world especially as the economic reality supporting it remains the same. Bibliography Books Intellectual Property Law – Lionel, Bentley & Brad Sherman, O. U. P. 1st Indian Edition, 2003 Cases and materials on Intellectual property, Ed. by William Cornish, 5th edition, Sweet & Maxwell, London, 2006. Cases & Materials in Intellectual Property Law, David I Bainbridge, 2nd Indian edition, 2005. Introduction to Intellectual Property Law, Jeremy Phillips, Alison Firth, 4th edition, Butterworths, London, 2001. Papers/ Articles 1. B. Reid, ‘The Right to Work’ [1982] EIPR 6. Last Accessed, January 1, 2007 at 1900 hrs. 2. F. Blakemore, ‘Grace Periods in European Patent Law’(Oct. 1998) Patent World 18. Last Accessed, January 1, 2007 at 1930 hrs. 3. J. Phillips, ‘Time to Close the Patent Office Doors?’ [1990] EIPR 151. Last Accessed, 1st January, 2007 at 1930 hrs. 4. Judge Massimo Scuffi, Intellectual Property Division,Milan Court of Appeal, The Enforcement Of Intellectual Property Rights In Europe, WIPO Paper, 2004. 5. L. Ray Patterson, Copyright Overextended: A Preliminary Inquiry into the Need for a Federal Statute of Unfair Competition, 17 U. Dayton L. Rev. 385 (1992). Last Accessed, January 1, 2007 at 1900 hrs. 6. William F. Patry, The Fair Use Privilege in Copyright Law 5 (1st ed. 1985). Last Accessed, January 1, 2007 at 1900 hrs. List of Cases A.Serjeant ‘International Exhibitions’ (1985-6) 15 CIPAJ 319 Asahi Kasei Kogyo [1991] RPC 485,529 (Lord Oliver) (HL). Bayer/Amino Acid Derivatives T12/90 [1991] EPOR 312,317. Bayer/Diastereomers T12/81 [1982] OJEPO296; [1979-85] EPOR B-308,312; Clothworkers of Ipswich Case (1614) Godb R 252; 78 ER 147; Darcy v. Allen (1602) 11 Co Rep 84b; 77 ER 1131. Darcy v. Allin (1602) 74 ER 1131 Evan MedicalPatent [1998] RPC517. Falk v. Jacobwitz (1944) 61 RPC 116, 123. Fomento v. Mentmore [1956] RPC 87. Glaverbel v. British Coal [1994] RPC443; [1995] RPC255 (CA); CIPA, para2.03. Hoechst/Polyvinylester dispersion T93/89 [1992] OJEPO 718; EPOR 155; Hooper Trading /T-Cell Growth Factor T877/90 [1993] EPOR 6, CIPA, para.2. 23. Humpherson v. Syer (1887) 4 RPC 407 Japan Styrene Paper /Foam Particles T444/88 [1993] EPOR 241. Lucas Aerospace, Ltd. v. Unison Indus., LP, 890 F.Supp. 329, 333- 334 n.7 (D.Del. 1995). Luchteriberg/Rear-View Mirror T84/83 [1979-85] EPOR 793,796 Lux Traffic Controls v. Pike Signals [1993] RPC 107 , 134-5, Macor Marine Systems/ Confidentiality Agreement T830/90 [1994] OJEPO 713; Markman v. Westview Instruments. Inc., 517 U.S. 370, 388 (1996) Merrell Dow Pharmaceuticals v. Norton [1996] RPC 76,82 (HL); Miller v. Fenton, 474 U.S. 104, 114 (1985). Mobil/Admissibility T550/88 [1992] OJEPO 117; [1990] EPOR 391 Monsanto (Brignac’s) Application [1971], RPC153 Pall Corp v. Commercial Hydraulics [1990] FSR 329. Phillips v. AWH Corp., 415 F.3d 1303, 1332 (Fed. Cir. 2005) (Mayer, J., dissenting) Research Corporation /Publication T381/87 [1990] OJEPO 213; [1989] EPOR 138 Robert Bosch/Electrical Machine T1085/92 [1996] EPOR 381 Strix v. Otter [1995] RPC 607, 633-4. Telecommunications/ Antioxidant T173/83 [1987] OJEPO 465. Telemecanique/Power supply unit T482/89[1993] EPOR 259; [1992] OJEPO 646. Webb v. Powers, 29 F. Cas. 511, 516-17 (C.C.D. Mass. 1847) (No. 17,323) Windsurfing International v. Tabor Marine (1985) RPC59, 77; Woven Plastics v.British Ropes [1970] FSR 47; Read More