Biotechnology and Software Patent Law: a Comparative Review of New Developments

Edited by Emanuela Arezzo and Gustavo
Ghidini

Cheltenham: Edward Elgar, 2011, 346 pp,
£88.20, ISBN 978 1 84980 040 2

Cite as: M O’Sullivan, “Book Review: Biotechnology and Software Patent Law: a Comparative Review of New Developments”, (2014) 11:2 SCRIPTed 203 http://script-ed.org/?p=1551

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DOI: 10.2966/scrip.110214.203



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This collection of essays comprises a
topical and insightful selection of perspectives on trends in patent law,
spanning various information technologies and biotechnology. The book is
divided into three parts, the first of which broaches general subjects in
patent law and the challenges that twenty-first century technologies
present for patent legislators and adjudicators. Part II focuses on
software patentability, covering this matter in Europe and the US, usefully
reminding the reader of the history of its legal protection. The final part
deals with the patentability of biotechnological inventions, looking at
matters principally from a European perspective, most likely due to the
controversy over the ongoing effort to draft the parameters of patents and
morality exclusions. Some US cases are also covered. The collection firmly
roots this area of intellectual property in context by grounding the
opening part in industry concerns and concomitant tailoring of the law
which allows for a keen critique of legal developments in this area. There
are twelve essays in total. The first five essays make up Part I.

Chapter one considers the dichotomy
between unitary patent systems and the diverse technologies governed by
patent law. The one-size-fits-all model does not spur innovation
predictably when applied in different technological fields. The chapter
deals with patent theories, of which there are several due to the fact that
multiple industries utilise the patent system. Tightly drafted laws tend to
hamper flexibility and the authors believe that judicial interpretation
within a statutory standard is preferable to other potential legal
approaches. The second chapter deals with the need for access to knowledge
which the patent system, if adequate licensing is not put in place, may
hamper. An innovative model in which an impartial public body would be
involved in this process is mooted. Unusually, this chapter contains much
more footnote than text. The topic of chapter three is that of the
definition of invention and the manner in which this has been developed.
The author advocates that the ills of overprotection can be avoided by
focusing on the promotion of innovation in the industrial arts, thereby
narrowing somewhat any tendencies to concentrate solely on commercial
significance. Chapter four handles the issue of permissible experimental
uses of patented inventions and deems this to be essential for research
activities. Examples are given where rules have been developed to allow for
research, for instance in universities, but the point is also made that
these institutions’ orientation has changed and they are now more
market-oriented and commercially focused. The importance of access to
knowledge is reiterated in order to foster innovation and the differing
priorities of patent holders and the public interest is explored. The fifth
chapter examines the interface between patents and competition law and
observes that the latter is coming to be applied to curtail the remit of
the former, most especially in the area of drugs. Overlap between these two
areas of law, however, tends to occur only where intellectual property
rights are being used improperly and in contravention of competition
law.

Part II comprises three chapters which
focus on software patents in Europe and the US. Chapter six questions the
usefulness of these patents and points out that their legal
parameters
are unclear. It also highlights the
fact that around the 1900s, several European countries did not grant
patents, but that this did not have a negative effect on innovative
activity. A lack of clarity in the law has led to semantic wrangling over
the definition of terms and, indeed, demarcating the protectable from
non-protectable has proven difficult. The next chapter in this section,
chapter seven, traces interpretive developments of the European Patent
Convention (EPC) in relation to exclusions from patentability which were
intended to apply to computer programs. A historical refresher is given in
relation to different legal coverage which has been considered over the
past few decades, such as the World Intellectual Property Organization’s
(WIPO)
sui generis model
for computer programs. It also charts the extent to which the strictures of
the EPC have been evaded so that the letter of the law has effectively been
evacuated and now software patents are permissible in Europe, despite the
apparent legislative restriction. This chapter also deals with the issue of
low quality patents and the effect such patents have had on the open source
software movement. The final chapter in this part critiques the relatively
recent US Supreme Court decision of
Bilski v
Kappos
in which the Court declined to render
business methods unpatentable. The author questions whether the judiciary
are best placed to effectuate reform of the patent system. Unlike the first
essay, the conclusion of this author is that legislative reform is
preferable to judicial, given the legislature’s greater access to research
resources and its democratic mandate.

The final part of this book encompasses
four chapters and focuses on biotechnology industries. Chapter nine
critiques the Biotech Directive 1996 and its interpretation, remarking that
different, and sometimes conflicting judicial and legislative
interpretations, have occurred in the jurisprudence in this area. The
legislation leaves certain ethical areas uncovered, for instance human
embryonic stem cells, and its scope in places is therefore vague. Moreover,
there are parallel European patent regimes, both of which have morality
exclusions and their case law is not aligned. Neither the EU nor the
European Patent Office (EPO) are obliged to observe each other’s precedents
so divergent interpretations are inevitable. The tenth chapter compares
practice in the US and Europe and the author takes the view that patents on
genes are much narrower than is generally believed. Patents, though, are
often disregarded, rights are not enforced and large companies often
encourage non-commercially orientated research on their patents in order to
increase their own bank of knowledge. Chapter eleven discusses the issue of
the patentability of human stem cell and synthetic biology patents,
acknowledging that the law relating to the latter is less complicated.
Again, continuing a theme in this section, deficiencies in legislative
definitions are identified. For example, medical descriptions of embryos
concerning the temporal cut-off point are not universal, leading to
uncertainty in a field where both science and law are unpredictable. The
WARF case is explored in depth in the context of patentability and
different scientific scenarios and their likely legal consequences are
explored. In the author’s view, biosafety issues will become more important
in this field in due course,. The twelfth and final chapter of the book
advocates more harmonisation between different legal regimes which govern
morality provisions. Whilst the EU and the EPO have experienced closer
legislative alignment, two separate judicial systems still exist and this
leads to diverging constructions of unclear provisions. This means that
inventions may receive protection in one jurisdiction and not in the next.
Furthermore, any amendments to provisions relating to morality are not, it
is argued, best done in the patent realm.

The book was especially useful as the
array of essays refreshes certain aspects of patent history which may have
been forgotten and this is done in a succinct manner. Pointed critiques are
also made and anomalies identified. On completing the collection, several
heretofore shady aspects of patent law and practice were much clearer in my
mind. There is a
unanimous critique of various
aspects of the patent regimes examined but contributors differ in the
remedies they recommend, which creates a welcome liveliness in this complex
area. Some authors believe that patents are too broad whilst others argue
that this is not the case and that there is a difference between the
possession and the exercise of patent rights. It would have been useful to
have a conclusion to the book, of which there was none, and the book
contains many typographical and grammatical errors in places. More
editorial rigour would not have gone amiss. Nonetheless, this does not
detract overall from the quality of the critiques and this book provides a
useful edition to my own library.

Maureen O’Sullivan

Lecturer in Law, National University of
Ireland, Galway

Book Review: Biotechnology and Software Patent Law: A Comparative View of New Developments