One of the first things we teach students when introducing patent law is that patents protect applied ideas. What we often fail to acknowledge is that what we deem to be capable of being an “invention” is that which has some kind of physical embodiment or physical effect. This chapter takes a historical approach to highlight that patent law has never been purely about the intangible. It does so by telling two histories. The first history concerns the development of patent law theory and policy. It discusses how changes and developments in patent-law reasoning and policy show the importance of the tangible and intangible aspects of inventions. The second history addresses the progression of the understanding of the patentable “invention”. More concretely, it looks at the terms “invention” and “manner of new manufacture”, and how their judicial interpretation over the years has developed away from, but not quite shaken off, the connection to the physical.
Jessica C. Lai
This chapter examines modern case law to show that patent law continues to be interested in the tangible physical embodiment of inventions as well as the intangible idea and information behind them. Focusing on information-based technologies, it analyses the different ways that Europe, the US and Australasia have recently dealt with software, business methods, biotechnology and methods of medical treatment or diagnosis. The cross-jurisdictional overview underscores the importance of physical embodiment or physical effects when it comes to identifying an “invention” or “manner of new manufacture”, even with these more informational kinds of developments. The chapter highlights the inconsistency between the arguments that such technologies cannot constitute patentable subject matter because they are information-based and have no corresponding physical embodiment or observable physical effects, on the one hand, and the concept that patent law is about the intangible, on the other hand. Finally, the chapter questions patent law’s ties to the physical and whether it is desirable or not.
Jessica C. Lai
Intellectual property has become a battleground for the protection of the cultural heritage of indigenous peoples and traditional communities. While indigenous peoples and traditional communities can use existing types of intellectual property in the forms that they exist, there are many reasons why intellectual property is not a good fit for their traditional knowledge (TK) and traditional cultural expressions (TCEs). This chapter examines the common argument that intellectual property is non-cultural and is, thus, fundamentally inappropriate for TK and TCEs. It discusses the dubious nature of this assertion, but acknowledges that certain specific features of intellectual property do not match indigenous peoples’ and traditional communities’ worldviews and knowledge systems. At the same time, intellectual property is constantly changing and is by no means fixed, but is chameleon-like. This chapter argues that such a creature is apt for dealing with different cultures and the intellectual products of different cultures. It ends by recognizing that intellectual property constitutes just part of the picture.
Jessica C. Lai
Patents are theorised to serve a multitude of functions, ranging from incentivising invention and the dissemination of knowledge, to signalling certain capabilities and values, to structuring transactions and the commercialisation process. For all intents and purposes, these functions are misaligned with Indigenous peoples’ interests and worldviews. Indeed, beyond failing to serve Indigenous peoples, there is a growing body of literature proclaiming and decrying the appropriation and propertisation of Indigenous knowledge and resources. Yet, there is little empirical research measuring the scale of any such appropriation or propertisation. This chapter presents the results of an empirical search for patents pertaining to Mānuka (Leptospermum scoparium) filed through the Intellectual Property Office of New Zealand (IPONZ). Furthermore, it reflects on the applications pertaining to Mānuka filed since the Patents Act 2013 came into force, and analyses whether the therein-created Māori Advisory Committee has served its purpose with respect to those applications.
Jessica C Lai
Biotech inventions have proved to be severely challenging for patent law systems around the world. European states have attempted to meet these challenges, resulting in law that directly deals with biotechnology at the national and European level. However, whether different states have dealt with biotechnology in a logical and clear manner is another question. This article discusses law that has been created through the European Union and European Patent Office, before addressing and comparing the manner in which Germany and Switzerland have implemented this law into their national statutes. It concludes that neither state has technologically sound law, creating distinctions that are not practically logical. The final part of this article discusses a term that was introduced into European patent law through the ‘Biotech Directive’, through the requirement that applicants disclose an industrial application or ‘function’ for a sequence or partial sequence of a gene. The term ‘function’ has been taken up by both Germany and Switzerland, but its potential – particularly in contrast to the term ‘industrial application’ – has yet to be realized. Though one often speaks of purpose-bound claims, this article explores the possibility of function-bound claims.
Jessica C Lai
This article analyses and compares the two main approaches that deal with the relationship between patent exclusive rights and the artefacts embodying patented inventions (usually chattel). Namely, it examines the implied licence approach and the exhaustion approach, at the national and international level, and extrapolates the scope of patent exclusive rights under these two models. The article uses the international dimension to highlight that having two approaches complicates international trade and that this is exacerbated by the nature of the exclusive rights themselves. Highlighting the fact that several exclusive rights only exist upon embodiment, do not marry up to the invention as claimed, and are – for all intents and purposes – served by rights in choses in possession, the article argues that several patent exclusive rights have no practical purpose. The article suggests a simplified approach to patent exclusive rights and thereby the relationship between patented inventions and their physical embodiments.