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  • 8/12/2019 Sookman INET CIGI Law and Innovation Paper


    Institute for

    New Economic Thinking and

    Centre for International

    Governance Innovation (CIGI)

    Law and Innovation: Is Intellectual

    Property a Path to Progress

    April 12, 2014

    Barry Sookman

    McCarthy Ttrault LLP

    [email protected]


    mailto:[email protected]:[email protected]:[email protected]
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    The protection of intellectual property is an important element in promoting innovation and in

    supporting markets in the trade and dissemination of innovative and creative products and

    services. In some sectors, intellectual property rights is the main asset of the business.

    Intellectual property rights are increasing the hard coinage earned by inventors and creators

    that are used to make, use and sell innovative products, obtain financing and capital, create well

    paying and rewarding jobs, obtain licensing revenues, and prevent free riding.1

    While it is generally unquestioned that intellectual property rights play a pivotal role in

    advancing innovation, there are divergent views about whether the existing calibration of rights,

    particularly in the fields of copyrights and patents is appropriate or requires adjusting. Forexample, the US Congress,2the European Union3and its member states including the UK4and

    Ireland,5Australia6and others have been re-examining their copyright laws in light of the

    challenges posed by digital technologies. Almost every stakeholder in these debates claims its

    proposals foster innovation. The major policy differences often relate to whether the innovation

    should permissionless; whether rightsholders should be compensated for new uses of their

    works; and the responsibilities, if any, of the innovators for infringements enabled or facilitated

    by the uses of new technologies.Aereo's retransmission serviceand theGoogle Books project are

    cases in point. The U.S. Congress, after just completing a major overhaul of the U.S. patent

    system, is once again examining a new set of patent reforms, among them reforms targeting

    patent trolls or NPEs. Stakeholders in those debates who argue for no reform, radical reforms,

    or reforms in between, also advance arguments premised on an innovation agenda.7 Intellectual

    property rights are also increasingly being raised in trade negotiations which has also raised

    issues as to their implications for innovation.

    The debates about the proper balance between exclusive intellectual property rights, exceptions

    to infringement, and the public domain come from multi-disciplinary perspectives. Many

    economists have researched the links between intellectual property rights and innovation. Thecourts, which play a major role in interpreting intellectual property laws, have their own views,

    views which sometimes shift or change in response to the cases and challenges they have to deal

    with. Given the importance of the roles played by the courts in interpreting IP laws, and in

    mediating between different perspectives on what their underlying purposes are, it is important

    to understand the judicial views about intellectual property rights.

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    This paper has the very modest goal of explaining how some courts have viewed the purposes

    and roles of intellectual property laws in relation to promoting innovation. The focus of the

    paper is on the law of patents, with particular emphasis on leading appellant decisions from U.S.

    and Canadian courts. The approach taken is to highlight the perspectives of the courts by setting

    out sample extracts from leading cases on important areas of patent law which reflect the courtsviews about the relationship between patent law concepts and innovation.

    Patents and Innovation what the courts have said

    Justification for patents

    Article I, 8, cl. 8, of the U.S. Constitution gives Congress the power "[t]o promote the Progress

    of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive

    Right to their respective Writings and Discoveries."

    Graham v. John Deere Co. of Kansas City,383 US 1 (1966) At the outset it must be

    remembered that the federal patent power stems from a specific constitutional provision

    which authorizes the Congress "To promote the Progress of . . . useful Arts, by securing

    for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries." Art. I, 8,

    cl. 8.The clause is both a grant of power and a limitation. This qualified authority, unlike

    the power often exercised in the sixteenth and seventeenth centuries by the English

    Crown, is limited to the promotion of advances in the "useful arts." It was written against

    the backdrop of the practiceseventually curtailed by the Statute of Monopoliesof the

    Crown in granting monopolies to court favorites in goods or businesses which had long

    before been enjoyed by the public.

    It is considered a bargain (especially in Canadian patent law). The inventor secures exclusive

    rights in return for new, ingenious, useful and unobvious disclosures and dedication of the

    invention to the public when the term expires.

    Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 SCR 153 patent, as has been saidmany times, is not intended as an accolade or civic award for ingenuity. It is a method by

    which inventive solutions to practical problems are coaxed into the public domain by the

    promise of a limited monopoly for a limited time. Disclosure is the quid pro quo for

    valuable proprietary rights to exclusivity which are entirely the statutory creature of the

    Patent Act.Monopolies are associated in the public mind with higher prices. The public
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    should not be expected to pay an elevated price in exchange for speculation, or for the

    statement of any mere scientific principle or abstract theorem (s. 27(3)), or for the

    discovery of things that already exist, or are obvious. The patent monopoly should be

    purchased with the hard coinage of new, ingenious, useful and unobvious disclosures.

    Bristol-Myers Squibb Co. v. Canada (Attorney General),[2005] 1 SCR 533 It is well

    understood that in Canada the grant of a patent is akin to a contract or bargain between

    the patentee on the one hand and the government of Canada (representing the interests

    of the general public) on the other. The patentee receives the grant of an exclusive right

    to use the patented invention in Canada for a specific period of time in return for fully

    disclosing the invention to the public by way of the patent specification

    The grant of a patent is in the nature of a bargain between the inventor on the one handand the Crown, representing the public, on the other hand. The consideration for the

    grant is double: first, there must be a new and useful invention, and secondly, the

    inventor must, in return for the grant of a patent, give to the public an adequate

    description of the invention with sufficiently complete and accurate details as will enable

    a workman, skilled in the art to which the invention relates, to construct or use that

    invention when the period of the monopoly has expired.

    Teva Canada Ltd. v. Pfizer Canada Inc.,[2012] 3 S.C.R. 625 The patent system is basedon a bargain, or quid pro quo: the inventor is granted exclusive rights in a new and

    useful invention for a limited period in exchange for disclosure of the invention so that

    society can benefit from this knowledge. This is the basic policy rationale underlying the


    Free World Trust v. lectro Sant Inc., [2000] 2 SCR 1024 Patent protection rests on the

    concept of a bargain between the inventor and the public. In return for disclosure of the

    invention to the public, the inventor acquires for a limited time the exclusive right to

    exploit it. It was ever thus. Even before the Statute of Monopolies (1623), the Crown

    rewarded an inventor with a limited monopoly in exchange for public disclosure of a

    new invention and a new trade within the kingdom ... or if a man hath made a new

    discovery of any thing: Clothworkers of Ipswich Case (1653), Godb. 252, 78 E.R. 147, at
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    p. 148, where the court went on to say that the effect of an unjustified monopoly was to

    take away free-trade, which is the birthright of every subject.

    Scott Paper Co. v. Marcalus Co., 326 US 249 (1945) By the patent laws Congress has

    given to the inventor opportunity to secure the material rewards for his invention for alimited time, on condition that he make full disclosure for the benefit of the public of the

    manner of making and using the invention, and that upon the expiration of the patent

    the public be left free to use the invention. SeeSpecial Equipment Co. v. Coe, 324 U.S.

    370, 378.As has been many times pointed out, the means adopted by Congress of

    promoting the progress of science and the arts is the limited grant of the patent

    monopoly in return for the full disclosure of the patented invention and its dedication to

    the public on the expiration of the patent.

    Patent rights are statutory and the rights of inventors are only those that are conferred by the

    applicable statute.

    Apotex Inc. v. Sanofi-Synthelabo Canada Inc., [2008] 3 SCR 265 At the outset, it is

    appropriate to refer to the words of Judson J. for this Court in Commissioner of Patents

    v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, 1963

    CanLII 2 (SCC), [1964] S.C.R. 49

    There is no inherent common law right to a patent. An inventor gets his patent according

    to the terms of the Patent Act, no more and no less.

    The most recent reference to the law of patents being wholly statutory are the words of

    Lord Walker in Synthon B.V. v. SmithKline Beecham plc, [2006] 1 All E.R. 685, [2005]

    UKHL 59, at paras. 57-58:

    The law of patents is wholly statutory, and has a surprisingly long history. . . . In the

    interpretation and application of patent statutes judge-made doctrine has over the yearsdone much to clarify the abstract generalities of the statutes and to secure uniformity in

    their application.
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    Nevertheless it is salutary to be reminded, from time to time, that the general concepts

    which are the common currency of patent lawyers are founded on a statutory text, and

    cannot have any other firm foundation.

    Patent laws goals have been summarized as having three objectives:

    Aronson v. Quick Point Pencil Co.,440 US 257 (1979) First, patent law seeks to foster

    and reward invention; second, it promotes disclosure of inventions to stimulate further

    innovation and to permit the public to practice the invention once the patent expires;

    third, the stringent requirements for patent protection seek to assure that ideas in the

    public domain remain there for the free use of the public.

    Balancing innovation and monopolies

    Patent law is based upon the social and economic rationale of balancing encouraging innovation

    and the avoidance of monopolies which can stifle competition.

    Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 US 141 The Patent Clause itself

    reflects a balance between the need to encourage innovation and the avoidance of

    monopolies which stifle competition without any concomitant advance in the "Progress

    of Science and useful Arts." As we have noted in the past, the Clause contains both a

    grant of power and certain limitations upon the exercise of that power. Congress may not

    create patent monopolies of unlimited duration, nor may it "authorize the issuance of

    patents whose effects are to remove existent knowledge from the public domain, or to

    restrict free access to materials already available."Graham v. John Deere Co. of Kansas

    City, 383 U. S. 1, 6 (1966).

    Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 US 141 From their inception, the

    federal patent laws have embodied a careful balance between the need to promote

    innovation and the recognition that imitation and refinement through imitation are both

    necessary to invention itself and the very lifeblood of a competitive economy.

    Graham v. John Deere Co. of Kansas City,383 US 1 (1966) Jefferson's philosophy on the

    nature and purpose of the patent monopoly is expressed in a letter to Isaac McPherson

    (Aug. 1813), a portion of which we set out in the margin. He rejected a natural-rights

    theory in intellectual property rights and clearly recognized the social and economic
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    rationale of the patent system. The patent monopoly was not designed to secure to the

    inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to

    bring forth new knowledge. The grant of an exclusive right to an invention was the

    creation of societyat odds with the inherent free nature of disclosed ideasand was not

    to be freely given. Only inventions and discoveries which furthered human knowledge,and were new and useful, justified the special inducement of a limited private monopoly.

    Jefferson did not believe in granting patents for small details, obvious improvements, or

    frivolous devices. His writings evidence his insistence upon a high level of patentability.

    Bilski v. Kappos,130 S. Ct. 3218 This Age puts the possibility of innovation in the hands

    of more people and raises new difficulties for the patent law. With ever more people

    trying to innovate and thus seeking patent protections for their inventions, the patent

    law faces a great challenge in striking the balance between protecting inventors and notgranting monopolies over procedures that others would discover by independent,

    creative application of general principles.

    Harvard College v. Canada (Commissioner of Patents),[2002] 4 S.C.R. 45 Given the

    above, the respondents argument that the object of the Act leads inexorably to the

    broadest reading of the definition of invention possible is problematic and is, in my

    view, based on an oversimplification of the patent regime. In the court below, Rothstein

    J.A. preferred the approach taken by the majority of the U.S. Supreme Court inChakrabarty, supra. The majority read the language of the Act expansively on the basis

    that the Act embodied Thomas Jeffersons philosophy that ingenuity should receive a

    liberal encouragement (p. 308). The minority of the court did not wholly accept this

    characterization, commenting in respect to the objective of the Act, at p. 319 of the


    The patent laws attempt to reconcile this Nations deep-seated antipathy to monopolies

    with the need to encourage progress. Deepsouth Packing Co. v. Laitram Corp., 406 U.S.

    518, 530-531 (1972); Graham v. John Deere Co., 383 U.S.1, 7-10 (1966). Given the

    complexity and legislative nature of this delicate task, we must be careful to extend

    patent protection no further than Congress has provided. In particular, were there an

    absence of legislative direction, the courts should leave to Congress the decisions
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    whether and how far to extend the patent privilege into areas where the common

    understanding has been that patents are not available.

    eBay Inc. v. MERCEXCHANGE, LLC,547 US 388 (2006) In cases now arising trial

    courts should bear in mind that in many instances the nature of the patent beingenforced and the economic function of the patent holder present considerations quite

    unlike earlier cases. An industry has developed in which firms use patents not as a basis

    for producing and selling goods but, instead, primarily for obtaining licensing fees For

    these firms, an injunction, and the potentially serious sanctions arising from its

    violation, can be employed as a bargaining tool to charge exorbitant fees to companies

    that seek to buy licenses to practice the patent. When the patented invention is but a

    small component of the product the companies seek to produce and the threat of an

    injunction is employed simply for undue leverage in negotiations, legal damages maywell be sufficient to compensate for the infringement and an injunction may not serve

    the public interest. In addition injunctive relief may have different consequences for the

    burgeoning number of patents over business methods, which were not of much economic

    and legal significance in earlier times. The potential vagueness and suspect validity of

    some of these patents may affect the calculus under the four-factor test.

    The equitable discretion over injunctions, granted by the Patent Act, is well suited to

    allow courts to adapt to the rapid technological and legal developments in the patentsystem. For these reasons it should be recognized that district courts must determine

    whether past practice fits the circumstances of the cases before them. With these

    observations, I join the opinion of the Court

    There is an explicit trade-off inherent in the patent system between providing exclusivity and

    preventing fee riding for a limited term and the associated potential drawbacks of rising prices,

    the need to engage in complex rights clearance exercises and temporary reduced competition.

    Mayo Collaborative v. Prometheus Labs.,132 S. Ct. 1289 (2012) Patent protection is,after all, a two-edged sword. On the one hand, the promise of exclusive rights provides

    monetary incentives that lead to creation, invention, and discovery. On the other hand,

    that very exclusivity can impede the flow of information that might permit, indeed spur,

    invention, by, for example, raising the price of using the patented ideas once created,

    requiring potential users to conduct costly and time-consuming searches of existing
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    patents and pending patent applications, and requiring the negotiation of complex

    licensing arrangements.

    Vornado Air Systems v. Duracraft Corp.,58 F. 3d 1498 (10th.Cir.1995) Vornado suggests

    that no patent law purpose is served by allowing copying of product configurations thatare not necessary to competition. We cannot agree. We find no support in the Patent Act

    itself or its application for the proposition that the patent goals are limited to enhancing

    competition, at least in the direct sense. To the contrary, patents operate by temporarily

    reducing competition. They create monopolies to reward inventors who invent "`things

    which are worth to the public the embarrassment of an exclusive patent.'"Graham v.

    John Deere Co., 383 U.S. 1, 9, 86 S.Ct. 684, 689, 15 L.Ed.2d 545 (1966)(quoting Thomas

    Jefferson, author of the 1793 Patent Act). Although competition ultimately may be

    enhanced by the increased product supply that results from operation of the patent law,the system's more obvious objective is to give the public the benefits of technological


    Harvard College v. Canada (Commissioner of Patents),[2002] 4 S.C.R. 45 (Binnie J, in

    dissent) If the patent were refused on the oncomouse itself, it would be easy for free

    riders to circumvent the protection sought to be given to the inventor by thePatent Act

    simply by acquiring an oncomouse and breeding it to as many wild mice as desired and

    selling the offspring (probably half of which will be oncomice) to the public.

    Patent law is assumed to create incentives to invest in, engage in, and to take risks to do

    research and development that foster innovation and new goods and services that benefit the

    public more than the disadvantages associated with patents.

    Teva Canada Ltd. v. Pfizer Canada Inc.,[2012] 3 S.C.R. 625 The patent bargain

    encourages innovation and advances science and technology.

    Harvard College v. Canada (Commissioner of Patents),[2002] 4 S.C.R. 45 There is nodoubt that two of the central objects of the Act are to advance research and development

    and to encourage broader economic activity (see Free World Trust v. lectro Sant Inc.,

    2000 SCC 66 (CanLII),[2000] 2 S.C.R. 1024, 2000 SCC 66, at para. 42).
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    Kewanee Oil Co. v. Bicron Corp.,416 US 470 (1974) The patent laws promote this

    progress by offering a right of exclusion for a limited period as an incentive to inventors

    to risk the often enormous costs in terms of time, research, and development. The

    productive effort thereby fostered will have a positive effect on society through the

    introduction of new products and processes of manufacture into the economy, and theemanations by way of increased employment and better lives for our citizens.

    Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 US 141 The applicant whose

    invention satisfies the requirements of novelty, nonobviousness, and utility, and who is

    willing to reveal to the public the substance of his discovery and "the best mode . . . of

    carrying out his invention," 35 U. S. C. 112, is granted "the right to exclude others from

    making, using, or selling the invention throughout the United States," for a period of 17

    years. 35 U. S. C. 154. The federal patent system thus embodies a carefully craftedbargain for encouraging the creation and disclosure of new, useful, and nonobvious

    advances in technology and design in return for the exclusive right to practice the

    invention for a period of years.

    Graham v. John Deere Co. of Kansas City,383 US 1 (1966) Thomas Jefferson, who as

    Secretary of State was a member of the group, was its moving spirit and might well be

    called the "first administrator of our patent system." See Federico, Operation of the

    Patent Act of 1790, 18 J. Pat. Off. Soc. 237, 238 (1936). He was not only an administratorof the patent system under the 1790 Act, but was also the author of the 1793 Patent Act

    Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a

    monopoly on tea that sparked the Revolution and Jefferson certainly did not favor an

    equivalent form of monopoly under the new government. His abhorrence of monopoly

    extended initially to patents as well. From France, he wrote to Madison (July 1788)

    urging a Bill of Rights provision restricting monopoly, and as against the argument that

    limited monopoly might serve to incite "ingenuity," he argued forcefully that "the benefit

    even of limited monopolies is too doubtful to be opposed to that of their general

    suppression," V Writings of Thomas Jefferson, at 47 (Ford ed., 1895).
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    His views ripened, however, and in another letter to Madison (Aug. 1789) after the

    drafting of the Bill of Rights, Jefferson stated that he would have been pleased by an

    express provision in this form:

    "Art. 9. Monopolies may be allowed to persons for their own productions in literature &their own inventions in the arts, for a term not exceeding years but for no longer term

    & no other purpose." Id., at 113

    And he later wrote:

    "Certainly an inventor ought to be allowed a right to the benefit of his invention for some

    certain time. . . . Nobody wishes more than I do that ingenuity should receive a liberal

    encouragement." Letter to Oliver Evans (May 1807), V Writings of Thomas Jefferson, at75-76 (Washington ed.)

    Int'l Technologies Consultants v. Pilkington plc,137 F. 3d 1382 (9th.Cir.1998) The owner

    of the patent is given a limited monopoly. The justification is that the public is best

    served by giving inventors monopolies on commercial exploitation of their innovations

    for enough time to furnish an incentive to do the work and spend the money creating


    Sanofi-Synthelabo v. Apotex, Inc., 470 F. 3d 1368 (Fed.Cir.2006) We have long

    acknowledged the importance of the patent system in encouraging innovation. Indeed,

    the "encouragement of investment-based risk is the fundamental purpose of the patent

    grant, and is based directly on the right to exclude." Patlex Corp. v. Mossinghoff, 758

    F.2d 594, 599 (Fed.Cir.1985). The district court relied on the testimony of Dr. Hausman

    in finding that the average cost of developing a blockbuster drug is $800 million.

    Importantly, the patent system provides incentive to the innovative drug companies to

    continue costly development efforts. We therefore find that the court did not clearly err

    in concluding that the significant "public interest in encouraging investment in drug

    development and protecting the exclusionary rights conveyed in valid pharmaceutical

    patents" tips the scales in favor of Sanofi.
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    Harvard College v. Canada (Commissioner of Patents),[2002] 4 S.C.R. 45 (Binnie J, in

    dissent) [T]hat the massive investment of the private sector in biotechnical research is

    exactly the sort of research and innovation that thePatent Actwas intended to promote.

    As this case demonstrates, even university research has to be paid for, and intellectualproperty rights are an important contributor.

    We are told that in the United States (comparable statistics do not seem to be available

    in Canada), a health-related biotechnology product on average costs between 200 and

    350 million dollars (U.S.) to develop, and takes 7 to 10 years from the research and

    development stage to bring it to market (Statistics Canada, Biotechnology Use and

    Development 1999 (March 2001), at p. 25). One would think it in the public interest to

    shorten the time and reduce the cost of research designed to minimize human suffering,and to reward those who develop research tools (such as the oncomouse) that might

    make this possible, provided the inventors disclose their work for others to build on.

    The practical application of biotechnology is in large measure the preoccupation of

    enterprises that need to profit from their successes to finance continued research on a

    broader front. These successes are few and far between (Statistics Canada, supra, at pp.

    13-14). It seems Du Pont spent about US$15 million to fund the oncomouse research: C.

    Arthur, The onco-mouse that didnt roar (1993), 138 New Scientist 4. Leder, the afore-mentioned co-inventor of the Harvard mouse, made the point to Congress as follows:

    [T]he great and costly engine for invention can only be effectively driven with the

    support from the private sector, motivated to serve a public need.

    The patent system offers the only protection available for the intellectual product of this

    research, and thus, the only hope of a fair return against the great financial risks that

    investment in biotechnology entails.

    There are those who question the level of incentive required to induce sufficient research

    in the biomedical field. Professor Gold of McGill University argues:
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    The argument for greater patent protection should be understood for what it is: an

    attempt to maximize profit, not to maximize levels of innovation. Clearly, a company

    would prefer to have as large a monopoly as possible. . . . But patent law is not about

    individual profit maximization; it is about maximizing the overall level of innovation in

    society. The two do not necessarily go together. (E. R. Gold, Biomedical Patents andEthics: A Canadian Solution (2000), 45 McGill L.J.413, at p. 423)

    Nevertheless it is indisputable that vast amounts of money must be found to finance

    biomedical research. It is necessary to feed the goose if it is to continue to lay the golden

    eggs. ThePatent Actembodies the public policy that those who directly benefit from an

    invention should be asked, through the patent system, to pay for it, at least in part.

    Momenta Pharmaceuticals v. Amphastar Pharma., 686 F. 3d 1348 Fed.Cir.2012) PerRader CJ (in dissent) Too often patent law is misunderstood as impeding more than

    promoting innovation. This academic proposition, called the tragedy of the Anti-

    commons in some scholarly presentations, suggests that exclusive rights impede the flow

    of information and limit experimentation that might lead to the next generation of

    technological advance. Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter

    Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (1998).

    In the first place, in an era of empirical research, one might ask the reason that thisacademic notion has never actually been verified. Although studied, no research has

    substantiated this alleged attack on the patent system. In fact, "the effects predicted by

    the anti-commons hypothesis are not borne out in the available data." Timothy Caulfield,

    Human Gene Patents: Proof of Problems?, 84 Chi.-Kent L.Rev. 133, 137 (2009); see also

    American Association for the Advancement of Science, INTERNATIONAL


    (2007) (finding the results of a 2006 survey of U.S. and Japanese researchers "offer very

    little evidence of an `anticommons problem'" and that "IP-protected technologies

    remain relatively accessible to the broad scientific community"). Surveys of academic

    researchers have revealed that "only 1 percent ... report having to delay a project, and

    none abandoned a project due to others' patents." Wesley M. Cohen & John P. Walsh,

    Real Impediments to Academic Biomedical Re search, in 8 INNOVATION POLICY AND

    THE ECONOMY 1, 10-11 (Adam B. Jaffe, Josh Lerner, & Scott Stern eds. 2008), available
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    at http://www.nber. org/&mtilde;arschke/mice/Papers/cohenwalsh.pdf (citing John P.

    Walsh et al., The View from the Bench: Patents, Material Transfers and Biomedical

    Research, 309 SCIENCE 2002 (2005)). In other words, patents on research tools and

    biomedical innovations do not significantly slow the pace of research and do not deter

    researchers from pursuing promising projects.

    The reason that patents have not been proven to impede more than stimulate

    technological advance is simple: it does not happen. It does not happen for several

    reasons. First, experiments advancing technology rarely, if ever, generate commercial

    value. Thus patent owners have little, if any, incentive to license or inhibit research.

    Stated otherwise, even if a patent owner wanted to sue or license potential researchers,

    experiments do not produce income or a source of damages. See id. at 12.

    Second, in the modern age of technology, the character of technological advance has

    changed. The era when the Bell Labs or some other tech center could hire the most

    promising engineers and essentially invent everything for the world has passed. With the

    vast specialization of all fields of research, advances in technology require great

    cooperation. A new product or a new direction in biotechnology or electronics will be

    produced by cooperation between a professor in Chengdu, China, a young programmer

    in Bangaluru, India, an engineer at a large corporation in Munich, Germany, a graduate

    student at Tokyo University, and a team at a small start-up company in Silicon Valley.The patent system can help inform each of them of the other and bring together their

    incremental advances to achieve the next generation of progress in some tiny corner of

    human progress.

    Harvard College v. Canada (Commissioner of Patents),[2002] 4 S.C.R. 45 (Binnie J, in

    dissent) There is much scholarly controversy in Canada over the role of intellectual

    property in biotechnology: E. R. Gold, Body Parts: Property Rights and the Ownership of

    Human Biological Materials (1996); E. R. Gold, Making Room: Reintegrating Basic

    Research, Health Policy, and Ethics Into Patent Law in T. A. Caulfield and B. Williams-

    Jones, eds., The Commercialization of Genetic Research: Ethical, Legal, and Policy

    Issues (1999), 63; T. A. Caulfield, Underwhelmed: Hyperbole, Regulatory Policy, and

    the Genetic Revolution (2000), 45 McGill L.J. 437; B. M. Knoppers, Reflections: The

    Challenge of Biotechnology and Public Policy (2000), 45 McGill L.J. 559; P. R. Mooney,
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    The Impetus for and Potential of Alternative Mechanisms for the Protection of

    Biotechnological Innovations (March 2001), at p. 13.

    Some thoughtful critics suggest that patents in this field may in fact deter rather than

    promote innovation: M. A. Heller and R. S. Eisenberg, Can Patents Deter Innovation?The Anticommons in Biomedical Research (1998), 280 Science 698; Gold, Biomedical

    Patents and Ethics: A Canadian Solution, supra.

    On a more technical level, it is pointed out that a 20-year patent is a very long time in the

    life cycle of biotechnology. A shorter patent life, with conditions more tailored to the

    industry, would, it is said, provide sufficient incentive. Then there are those who

    advocate the farmers privilege to avoid farmers being subject to patent enforcement in

    the case of the progeny of patented plants and animals. Others advocate protection forinnocent bystanders who inadvertently make use of a genetically engineeredplant or

    animal, unaware of its being patented.

    The rules associated with patents are, for the most part, generally applicable across different

    technological domains. However, certain other public policy considerations may be taken into

    account and Congress (and Parliament) can refine the rules as public policy requires, subject in

    the U.S. to complying with the Constitution.

    Mayo Collaborative v. Prometheus Labs.,132 S. Ct. 1289 (2012) At the same time, patentlaw's general rules must govern inventive activity in many different fields of human

    endeavor, with the result that the practical effects of rules that reflect a general effort to

    balance these considerations may differ from one field to another. See Bohannan &

    Hovenkamp, Creation without Restraint, at 98-100.

    In consequence, we must hesitate before departing from established general legal rules

    lest a new protective rule that seems to suit the needs of one field produce unforeseen

    results in another. And we must recognize the role of Congress in crafting more finelytailored rules where necessary. Cf. 35 U.S.C. 161-164 (special rules for plant patents).

    We need not determine here whether, from a policy perspective, increased protection for

    discoveries of diagnostic laws of nature is desirable.
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    Graham v. John Deere Co. of Kansas City,383 US 1 (1966) Within the limits of the

    constitutional grant, the Congress may, of course, implement the stated purpose of the

    Framers by selecting the policy which in its judgment best effectuates the constitutional

    aim. This is but a corollary to the grant to Congress of any Article I power.Gibbons v.

    Ogden, 9 Wheat. 1.Within the scope established by the Constitution, Congress may setout conditions and tests for patentability.

    Association for Molecular Pathology v USPTO,689 F.3d 1303 (Fed.Cir.2012) There is no

    collective right of adverse possession to intellectual property, and we should not create

    one. Our role is to interpret the law that Congress has written in accordance with the

    governing precedents. I would do so and would affirm the district court's rulings as to

    the BRCA gene and BRCA gene segment claims.

    Merck & Co., Inc. v. Apotex Inc.,2006 FCA 323 In support of their submission, Merck

    and Astra also argue thatsubsection 55.2(1)is an exemption from the primary purpose

    of theAct,which they say is to protect the exclusive rights of a patentee, and therefore

    should be strictly construed. Again, I do not agree. In Apotex Inc. v. Wellcome

    Foundation Ltd.,2002 SCC 77 (CanLII),[2002] 4 S.C.R. 153, at paragraph 37, that Court

    held that patent law seeks to find a balance between encouraging innovation and sharing

    the products of innovation with the public rather than simply seeking to protect the


    Moreover, in Harvard College v. Canada (Commissioner of Patents),2002 SCC 76

    (CanLII),[2002] 4 S.C.R. 45, the Supreme Court of Canada also acknowledged that the

    manner in which Canada has administered its patent regime reveals that the promotion

    of ingenuity has at times been balanced against other considerations.Subsection 55.2(1)

    is, accordingly, not an exemption from the purpose of theAct,but is an integral part

    thereof by seeking to balance the rights of patentees with those of the public.

    Accordingly, I can see no basis for strictly construingsubsection 55.2(1)as Merck and

    Astra suggest.

    It is assumed that free exploitation of ideas will be the rule to which the protection of patents is

    the exception.
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    Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 US 141 The attractiveness of such a

    bargain, and its effectiveness in inducing creative effort and disclosure of the results of

    that effort, depend almost entirely on a backdrop of free competition in the exploitation

    of unpatented designs and innovations. The novelty and nonobviousness requirements

    of patentability embody a congressional understanding, implicit in the Patent Clauseitself, that free exploitation of ideas will be the rule, to which the protection of a federal

    patent is the exception.

    Why disclosures of inventions are beneficial

    A goal of patent law is to promote the disclosure of inventions. This is assumed to have several

    beneficial results.

    It results in inventions that would not be disclosed or devised in the absence of a patent


    Graham v. John Deere Co. of Kansas City,383 US 1 (1966) The difficulty of formulating

    conditions for patentability was heightened by the generality of the constitutional grant

    and the statutes implementing it, together with the underlying policy of the patent

    system that "the things which are worth to the public the embarrassment of an exclusive

    patent," as Jefferson put it, must outweigh the restrictive effect of the limited patent

    monopoly. The inherent problem was to develop some means of weeding out thoseinventions which would not be disclosed or devised but for the inducement of a patent.

    It results in knowledge that can be freely exploited when the patent expires. The benefit enures

    both to the public that uses the invention to make products and to consumers who benefit from

    exploitation by others.

    Kewanee Oil Co. v. Bicron Corp.,416 US 470 (1974) In return for the right of exclusion

    this "reward for inventions,"Universal Oil Co. v. Globe Co., 322 U. S. 471, 484 (1944)

    the patent laws impose upon the inventor a requirement of disclosure. To insure

    adequate and full disclosure so that upon the expiration of the 17-year period "the

    knowledge of the invention enures to the people, who are thus enabled without

    restriction to practice it and profit by its use,"United States v. Dubilier Condenser Corp.,

    289 U. S. 178, 187 (1933),the patent laws require that the patent application shall

    include a full and clear description of the invention and "of the manner and process of
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    making and using it" so that any person skilled in the art may make and use the

    invention. 35 U. S. C. 112.

    Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 US 141 Soon after the adoption of the

    Constitution, the First Congress enacted the Patent Act of 1790, which allowed the grantof a limited monopoly of 14 years to any applicant that "hath . . . invented or discovered

    147*147 any useful art, manufacture, . . . or device, or any improvement therein not

    before known or used." 1 Stat. 109, 110. In addition to novelty, the 1790 Act required that

    the invention be "sufficiently useful and important" to merit the 14-year right of

    exclusion. Ibid. Section 2 of the Act required that the patentee deposit with the Secretary

    of State, a specification and if possible a model of the new invention, "which specification

    shall be so particular, and said models so exact, as not only to distinguish the invention

    or discovery from other things before known and used, but also to enable a workman orother person skilled in the art or manufacture. . . to make, construct, or use the same, to

    the end that the public may have the full benefit thereof, after the expiration of the

    patent term."

    Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 US 141 Moreover, the ultimate goal

    of the patent system is to bring new designs and technologies into the public domain

    through disclosure.

    Scott Paper Co. v. Marcalus Co., 326 US 249 (1945) The aim of the patent laws is not only

    that members of the public shall be free to manufacture the product or employ the

    process disclosed by the expired patent, but also that the consuming public at large shall

    receive the benefits of the unrestricted exploitation, by others, of its disclosures.

    By the force of the patent laws not only is the invention of a patent dedicated to the

    public upon its expiration, but the public thereby becomes entitled to share in the good

    will which the patentee has built up in the patented article or product through the

    enjoyment of his patent monopoly. Hence we have held that the patentee may not

    exclude the public from participating in that good will or secure, to any extent, a

    continuation of his monopoly by resorting to the trademark law and registering as a

    trademark any particular descriptive matter appearing in the specifications, drawings or
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    claims of the expired patent, whether or not such matter describes essential elements of

    the invention or claims.

    The public disclosure through patent applications is immediately available for others to build

    upon. It speeds the progress of scientific endeavor and facilitates experimentation.

    Momenta Pharmaceuticals v. Amphastar Pharma., 686 F. 3d 1348 Fed.Cir.2012) Per

    Rader CJ (in dissent) Thus, patents properly remain a tool for research and

    experimentation because the system encourages publication and sharing of research

    results. Disclosure of how to make and use the invention is the "quid pro quo" of the

    patent grant. SeeJEM Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 142,

    122 S.Ct. 593, 151 L.Ed.2d 508 (2001).In exchange for disclosure, the inventor receives a

    limited term of exclusivity to benefit from commercialization of his invention. Without

    this promise of exclusivity, researchers at corporations would be forced to turn to secrecy

    as the best protection for their inventions. Even academic researchers may delay

    publication of results in order to maintain an edge over the competition, Cohen & Walsh,

    supra at 14, and the race to the patent office helps counteract this tendency toward

    secrecy by rewarding earlier disclosure. "The information in patents is added to the store

    of knowledge with the publication/issuance of the patent.... [It] is not insulated from

    analysis, study, and experimentation for the twenty years until patent expiration."

    Classen, 659 F.3d at 1072.Rather, information shared through patent applications is

    immediately available for others to build upon. It speeds the progress of scientific

    endeavor. In other words, the patent system's modern benefits facilitate experimentation

    far more than any hypothetical inhibition.

    The public disclosure requirements to obtain a patent will stimulate further innovations.

    Kewanee Oil Co. v. Bicron Corp.,416 US 470 (1974) When a patent is granted and the

    information contained in it is circulated to the general public and those especially skilled

    in the trade, such additions to the general store of knowledge are of such importance to

    the public weal that the Federal Government is willing to pay the high price of 17 years of

    exclusive use for its disclosure, which disclosure, it is assumed, will stimulate ideas and

    the eventual development of further significant advances in the art.
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    The patent system seeks not only superior inventions but also but also a multiplicity of


    Vornado Air Systems v. Duracraft Corp.,58 F. 3d 1498 (10th.Cir.1995) In this respect, it is

    significant that the framers of the patent system did not require an inventor todemonstrate an invention's superiority to existing products in order to qualify for a

    patent. That they did not do so tells us that the patent system seeks not only superior

    inventions but also a multiplicity of inventions. A variety of choices is more likely to

    satisfy the desires of a greater number of consumers than is a single set of products

    deemed "optimal" in some average sense by patent examiners and/or judges. And the

    ability to intermingle and extrapolate from many inventors' solutions to the same

    problem is more likely to lead to further technological advances than is a single, linear

    approach seeking to advance one "superior" line of research and development.

    The incentives provided by patents leads to inventions being discovered earlier than they

    otherwise would have been.

    Kewanee Oil Co. v. Bicron Corp.416 US 470 (1974) The ripeness-of-time concept of

    invention, developed from the study of the many independent multiple discoveries in

    history, predicts that if a particular individual had not made a particular discovery others

    would have, and in probably a relatively short period of time. If something is to be

    discovered at all very likely it will be discovered by more than one person. Singletons andMultiples in Science (1961), in R. Merton, The Sociology of Science 343 (1973); J. Cole &

    S. Cole, Social Stratification in Science 12-13, 229-230 (1973); Ogburn & Thomas, Are

    Inventions Inevitable?, 37 Pol. Sci. Q. 83 (1922). Even were an inventor to keep his

    discovery completely to himself, something that neither the patent nor trade secret laws

    forbid, there is a high probability that it will be soon independently developed. If the

    invention, though still a trade secret, is put into public use, the competition is alerted to

    the existence of the inventor's solution to the problem and may be encouraged to make

    an extra effort to independently find the solution thus known to be possible. Theinventor faces pressures not only from private industry, but from the skilled scientists

    who work in our universities and our other great publicly supported centers of learning

    and research.

    Perspectives on patent eligibility
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    Patent eligibility is interpreted as being intentionally broad to promote innovation.

    Bilski v. Kappos,130 S. Ct. 3218 Congress plainly contemplated that the patent laws

    would be given wide scope."Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204,

    65 L.Ed.2d 144 (1980).Congress took this permissive approach to patent eligibility toensure that "`ingenuity should receive a liberal encouragement.'" Id., at 308-309,100

    S.Ct. 2204(quoting 5 Writings of Thomas Jefferson 75-76 (H. Washington ed. 1871)).

    Diamond v. Chakrabarty,447 US 303 The relevant legislative history also supports a

    broad construction. The Patent Act of 1793, authored by Thomas Jefferson, defined

    statutory subject matter as "any new and useful art, machine, manufacture, or

    composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21,

    1793, 1, 1 Stat. 319. The Act embodied Jefferson's philosophy that "ingenuity should

    receive a liberal encouragement." 309*309 5 Writings of Thomas Jefferson 75-76

    (Washington ed. 1871). SeeGraham v. John Deere Co., 383 U. S. 1, 7-10 (1966).

    Subsequent patent statutes in 1836, 1870 and 1874 employed this same broad language.

    In 1952, when the patent laws were recodified, Congress replaced the word "art" with

    "process," but otherwise left Jefferson's language intact.

    CLS Bank Intern. v. Alice Corp. Pty. Ltd.,717 F. 3d 1269 (Fed.Cir.2013) cert. to SCOTUS

    granted. Congress plainly contemplated that the patent laws would be given wide

    scope.");Bilski, 130 S.Ct. at 3225("Congress took this permissive approach to patent

    eligibility to ensure that `ingenuity should receive a liberal encouragement.'" (quoting

    Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204)).

    Harvard College v. Canada (Commissioner of Patents),[2002] 4 S.C.R. 45 I agree that

    the definition of invention in thePatent Actis broad. Because the Act was designed in

    part to promote innovation, it is only reasonable to expect the definition of invention to

    be broad enough to encompass unforeseen and unanticipated technology. I cannot

    however agree with the suggestion that the definition is unlimited in the sense that it

    includes anything under the sun that is made by man

    Parliament did not leave the definition of invention open, but rather chose to define it

    exhaustively. Regardless of the desirability of a certain activity, or the necessity of
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    creating incentives to engage in that activity, a product of human ingenuity must fall

    within the terms of the Act in order for it to be patentable.

    Patent eligibility principles limit what can be patented to ensure that what can be patented is

    broad but not unlimited. In the U.S., the courts' precedents provide three judicially createdexceptions to 101's broad patent-eligibility principles.Association for Molecular Pathology v

    USPTO,689 F.3d 1303 (Fed.Cir.2012). The Court concepts covered by these exceptions are

    `part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to

    none.'"Bilski, 130 S. Ct. at 3225

    Laws of nature, natural phenomena, and abstract ideas are not patentable.

    Diamond v. Chakrabarty,447 US 303 (1980) This is not to suggest that 101 has no

    limits or that it embraces every discovery. The laws of nature, physical phenomena, andabstract ideas have been held not patentableThus, a new mineral discovered in the

    earth or a new plant found in the wild is not patentable subject matter. Likewise,

    Einstein could not patent his celebrated law that E=mc[2]; nor could Newton have

    patented the law of gravity. Such discoveries are "manifestations of . . . nature, free to all

    men and reserved exclusively to none.

    Diamond v. Diehr, 450 U.S. 175 (1981).This Court has undoubtedly recognized limits to

    101 and every discovery is not embraced within the statutory terms. Excluded fromsuch patent protection are laws of nature, natural phenomena, and abstract ideas "A

    principle, in the abstract, is a fundamental truth; an original cause; a motive; these

    cannot be patented, as no one can claim in either of them an exclusive right."

    Mayo Collaborative v. Prometheus Labs.,132 S. Ct. 1289 (2012) We find that the

    process claims at issue here do not satisfy these conditions. In particular, the steps in the

    claimed processes (apart from the natural laws themselves) involve well-understood,

    routine, conventional activity previously engaged in by researchers in the field. At thesame time, upholding the patents would risk disproportionately tying up the use of the

    underlying natural laws, inhibiting their use in the making of further discoveries

    The Court has repeatedly emphasized this last mentioned concern, a concern that patent

    law not inhibit further discovery by improperly tying up the future use of laws of nature
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    These statements reflect the fact that, even though rewarding with patents those who

    discover new laws of nature and the like might well encourage their discovery, those laws

    and principles, considered generally, are "the basic tools of scientific and technological

    work."Benson, supra, at 67, 93 S.Ct. 253.And so there is a danger that the grant ofpatents that tie up their use will inhibit future innovation premised upon them, a danger

    that becomes acute when a patented process amounts to no more than an instruction to

    "apply the natural law," or otherwise forecloses more future invention than