Justine Pila

This paper responds to an invitation by the editors to consider whether the intellectual property regime suggests an appropriate model for protecting interests in detached human body parts. It begins by outlining the extent of existing IP protection for body parts in Europe, and the relevant strengths and weaknesses of the patent system in that regard. It then considers two further species of IP right of less obvious relevance. The first are the statutory rights of ownership conferred by domestic UK law in respect of employee inventions, and the second are the economic and moral rights recognised by European and international law in respect of authorial works. In the argument made, both of these species of IP right may suggest more appropriate models of sui generis protection for detached human body parts than patent rights because of their capacity better to accommodate the relevant public and private interests in respect of the same

In this article, the categories of literary, dramatic, musical and artistic (LDMA) works in which copyright subsists are considered, and an argument made that the legislature’s division of protected works into categories is appropriate given the psychology of art appreciation, and the fact that in order to perceive a work qua work one must perceive it in relation to a category of work. Nonetheless, an argument is also made that the statutory definitions of LDMA works suffer from the defects of formalist theory. Those defects are outlined, and an alternative theory of works proposed, drawing on the scholarship of art theorist Kendall Walton and the intentional, historical view of the work developed in a recent publication (J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71 MLR 535–58). According to that theory, LDMA works are constituted in part by their properties of form and in part by the history of their individual production. Consistent with this, the statutory categories of work are cast as denoting authorial traditions: evolving practices of LDMA expression that exist and are experienced in a particular social context. In addition to its general explanatory and normative value for copyright, this theory has specific implications for the legislature’s expression of the categories of works in which copyright subsists

The term “patent” is an abbreviation of “letters patent”, the open form of document historically issued by the Crown for the purpose of conferring a right or privilege or otherwise communicating the royal will. In contemporary law it denotes the species of intellectual property that is granted as an inducement for the creation and disclosure of novel, inventive and industrially applicable inventions. In the UK that property is conferred under the Patents Act 1977, or with similar effect the European Patent Convention (EPC), and comprises the exclusive right to use and sell a protected invention for up to 20 years. A protected invention may be any subject matter having technical character; a definition derived from the Act’s express exclusion from patentability of (among other things) discoveries, scientific theories, business methods and computer programs “as such”. Also excluded are surgical, therapeutic and diagnostic methods (for lack of industrial applicability), and inventions the commercial exploitation of which would be contrary to public policy or morality. In these and other respects the Patents Act follows the EPC, which it was the explicit purpose of that Act to implement. Patents are territorial, and are thus only valid and infringed in their country of issue. For a UK inventor to obtain protection outside the UK s/he must therefore obtain a patent from that country, either directly by applying under its laws, or if it is a party to the EPC or other intergovernmental agreement, indirectly by applying under that agreement. Inventors seeking protection for an invention in more than one country will often do so by means of the Patent Cooperation Treaty.

Recent events in the United Kingdom have focused attention on the protection at law of academic freedom. Institutional academic freedom may be defined as the freedom of a university to determine its scholarly agenda and system of governance, notwithstanding dependence on external support. Individual academic freedom may be similarly defined as the freedom of individual university members to determine their own scholarly agenda, including how to pursue and present their research, notwithstanding dependence on institutional support. While such freedoms sit in tension, they share a basis in the liberal ideal of the pursuit of truth through teaching, discussion and scholarly research.

In Generics Ltd v Lundbeck A/S [2009] UKHL 12, the House of Lords affirmed the validity of a patent for a chemical product – an isolated stereoisomer – supported by a method of producing the product, but protecting the chemical product as such independent of the method by which it was made. In so doing, it appears to have resolved a longstanding tension between granting patents for chemical products and requiring that the scope of monopoly rights equiperate with the disclosure in the specification. It also appears to have rejected the Biogen Inc v Medeva plc [1997] RPC 1 (HL) view of the balance to be struck between inventors and the public, and the commitment expressed by Lord Hoffmann in that case to promoting “research and healthy competition”. However, their Lordships’ decision is a limited one, applying only to single isolated chemical products. Further, their support for distinguishing categories of claims leaves scope for adopting a different approach with respect to other types of products. In this article I consider one such approach, consistent with the reasoning of the Biogen case, and focused on the purpose of the patent system and the impact of a patent on the relevant art. Such an approach has support in contemporary law, pre-1977 patent jurisprudence, and the intent of the European drafters themselves. Provided its aim is to ensure proportionate protection, any differential treatment across technological fields ought not to constitute discrimination within the meaning of TRIPS or UK patent jurisprudence. Indeed, such treatment may be required precisely to ensure a technologically-neutral patent system.

The Patent Cooperation Treaty (PCT) is an international treaty that was concluded in 1970 as a special agreement under the 1883 Paris Convention for the Protection of Industrial Property. It establishes an international system for the filing and examination of patent applications and the conduct of “prior art” (technical literature) searches that is administered by a network of national and regional patent offices acting as Receiving Offices, International Searching Authorities and/or International Preliminary Examining Authorities. Its specific purpose is to help inventors obtain a patent for the same invention in two or more PCT countries by allowing them to assert their claim internationally have it subjected to preliminary assessment before committing to one or more local applications. It thus reduces the risk of wasted expenditure by enabling an applicant to postpone the decision to pursue an application to grant until confident of its success. By creating a series of pre-grant procedures with recognised validity in each of the PCT’s nearly 140 countries, it also provides a basis for the harmonisation of patentability standards and facilitates the move toward the creation of an international patent.

The purpose of the patent system is to provide incentives for the development of new and useful products and processes. Such products and processes are generally referred to as ‘inventions’. Whilst patents have historically been sought and granted for mechanical and chemical inventions only, the biotechnology revolution of the last 30 years has radically changed this by precipitating a mass of patent applications in respect of living and biological matter. Applications of this nature have forced a re-examination by courts and policy makers of traditional understandings of what can be patented. In particular, they have forced consideration of the extent (if any) to which life and nature can be viewed as ‘inventions’ so as to be capable of supporting a patent. In considering this question the central guiding principle has been the distinction, on which all of patent law is said to rest, between man-made inventions on the one hand and discoveries of nature on the other.

In this essay I consider the role of authorship in balancing epistemological trust and skepticism in e-science. Drawing on studies of the diagnostic practices of doctors in British breast care units and the gate-keeping practices of a Californian publisher of horticultural works, I suggest that conventions of authorial designation have an important role to play in nurturing the skepticism essential for scientific rigor within the framework of epistemological trust that pragmatism and morality require. In so doing I question the assumption of contemporary scholars that scientific works are determinate in fact, while nonetheless supporting the idea of semi-indeterminate authorship as a goal. I then consider the theoretical and practical consequences of that view with an analysis of the Anglo-American legal constraints on attributions of authorship, and the complex of other relevant interests and rights that may require different models of attribution oriented not around authors themselves, but rather their employer, their manager or supervisor, or some pseudonym deemed to be an appropriate organizing mechanism for the works in question.

This review article offers a European perspective on the pluralistic, principles-based model of intellectual property (IP) advanced by Robert Merges in his book Justifying Intellectual Property. After introducing Merges’s model and theory of IP with reference to IP theories generally, other pluralistic legal models, and patterns of judicial reasoning in the patent and copyright fields, the article argues that European jurisprudence offers broad support for Merges’s operational model of IP, while also challenging certain aspects of his wider analysis. They include his ‘one size fits all’ foundational theory of IP, his account of key IP rules and practices, and his choice and conception of IP’s midlevel principles. Through this critique the article draws attention to the utilitarian bias of Merges’s model; a bias which undermines its pluralistic claims, in part by undermining Merges’s own foundational theory of IP. The result is to underline the limits of a regime unconcerned with its own normative basis, and the need for more rather than less discussion of IP theory, including more work of the type that Merges’s book undertakes