Why things are as they are in patent law: forgotten principles and histories, and the role of complexity

In my previous post ‘Subject Matter Relationships: the need for strictness, complexity and fuzziness’ (here) I considered the different tests that are used to compare subject matter for priority, added matter and infringement. That post generated many interesting comments from readers which led to me think about why things are as they are.

Here are two of those comments:

‘When you lack the discipline to make any single court decision binding, you necessarily create the possibility of the "rule of law" completely arbitrary and vacillating from one decision to the next.

It is easy to see that such a vacillating and uncontrolled driver is simply no way to set the path for what examiners (already a bit wayward given that they will tend to put their interpretation on decisions) can use as "takeaways" from court decisions.’ 

So case law must be consistent, presumably centred on certain principles.

‘Of course in the patent world there is no such thing as an absolute. While the EPO does claim to use a novelty test, the guidelines do indeed stress that an explicit disclosure is not necessary, and, especially in priority questions there is a body of case-law that talks about having the same idea, i.e. again not quite explicit disclosure. Thus it's not quite as black and white. But then, nobody said this job was easy.

I think a good part of the problem is the US history of disclosure mainly being aimed at "possession of the invention" rather than the "able to be carried out" in EPO history. Rather then [Sic] two pairs of lenses, perhaps we could talk about meeting in the middle, but coming from different sides?’

Was this the framework to decide
patentability that eluded Bilski?

So perhaps history acts as a guiding principle as to how we approach patent laws and legal tests.

What went wrong in Bilski? Was it a failure to develop new principles?

In the US case of Bilski [noted briefly on the IPKat here] the Federal Circuit and the Supreme Court disagreed on the minimal requirements for a ‘method’ claim. The Federal Circuit decided that the ‘machine or transformation’ test should always be met and the Supreme Court said that was too strict a test.

I recently came across a paper by Peter Menell (here) which gave an interesting perspective on Bilski, viewing it as a missed opportunity to lay out a framework for determining the patentability of business methods. The paper accuses the Supreme Court of ‘superficial textualism’ in the way it carried out its analysis, and it says:

‘The solution lies in recognizing that patentable subject matter cannot evolve to meet the new challenges of the information age without integrating 18th, 19th, and 20th century sources of patentable subject law into a flexible and evolving body of common law that is sensitive to history, statutory evolution, constitutional constraints, and understanding of modern science and technology.’ 

So according to this paper US patent law has failed to evolve in a way where Bilski could have been decided on principles derivable from centuries of jurisprudence. The ‘machine or transformation’ test is ultimately very simplistic and does not take into account that many inventions cannot be classified or analysed in this way. The Supreme Court was clearly aware of that, but perhaps did not feel it had the expertise to define an appropriate new test. Both Courts seem to have failed to extend existing patent principles in a way which would be relevant to assessing the patentability of new business methods.

Does complex technology mean we can no longer apply historical lessons?

Complex technology
requires complex
patentability tests

This Kat is a practitioner in the field of biotech/pharma patents. Much of my time is taken up in understanding how patentability tests are applied to complex technology. As an example if one considers how inventive step was assessed in Teva UK Limited & Teva Pharmaceuticals Limited v Leo Pharma A/S & Leo Laboratories Limited [2014] EWHC 3096 (Pat) (see Katpost here) one sees that for a pharmaceutical formulation the following criteria may be relevant:

* obvious to try 

* reasonable expectation of success 

* prejudice 

* inventive selection 

* the Technograph test (Technograph v Mills & Rockley [1972] RPC 346) 

* synergy

Mr Justice Birss discussed some of these criteria in more detail than the parties, who perhaps had started to suffer ‘test fatigue’.

In Human Genome Sciences Inc v Eli Lilly and Company [2011] UKSC 51 (see Katpost here) the UK Supreme Court identified 15 different principles from EPO case law on the patentability of new genes.

If the patentability of complex technologies is going to be determined by the application of many different tests, then perhaps it is simply not possible to have a historical perspective, and perhaps it is difficult to derive over-arching principles to guide the development of patent law.

Which principles are we now following in Europe?

The second comment I have quoted above takes the view that added matter is assessed in the US based on the principle of ‘possession of the invention’. Clearly we don’t follow that principle in Europe. Here added matter is more centred on the actual text that has been provided in the specification. However that may not be the best reflection of the purpose behind the added matter test which limits the extent to which the Applicant can improve its position after filing and provides certainty for third parties.

The first comment I quoted mentions the possibility of the ‘rule of law’ being ‘arbitrary’ in the sense of case law changing from one decision to the next. Clearly there need to be ‘fixed’ tests in case law. However how do we know that case law is going in the best direction? It seems to this Kat that the facts of an important case or the events of the day can determine how the law develops, without any overarching principle being followed.

Patent law is clearly highly functional. It allows Patent Offices to process a high volume of cases concerning many diverse inventions, and in this Kat’s opinion provides a good level of certainty for users of the patent system. However this Kat wonders whether patent law has failed to consider properly the principles that should guide development of patent law.

How should economics affect patent law?

Even if you are filing an embroidered
patent application you need to ensure lots
fallback positions for amendments

The patent system necessarily has economic underpinnings. It is a tool to promote innovation which in turn helps the economic system. However in their everyday workings Patent Offices and courts pay little attention to the economic effect of their policies and decisions. Their concern is to deal with the immediate issues in front of them, rather than worry about the wider implications of what they do. As a practitioner I see how that happens, and how difficult it would be to do anything differently.

However this Kat does wonder whether the patent system appreciates how it impacts the technology sectors that it serves. In the biotech sector patentability tests are becoming ever more complex and unpredictable. In an EPO opposition 30 to 50 documents can be cited by opponents attacking inventive step. The problem solution approach normally copes admirably under these conditions, but such proceedings too often seem to be deciding the fate of huge amounts of research based on a fortuitous interpretation of a paragraph in the patent specification or in the prior art. Many years of patent law jurisprudence seems to have led to a system where valuable patents are lost simply because the specification did not recite a narrower range or a higher temperature. Surely this is not how it was meant to be?