Patent Boundaries:

Global Challenges in Emerging Fields of

Science

Aurora Plomer, BA, MA, LLB, PhD

Professor of Law and Bioethics

Director of S.I.B.L.E

University of Sheffield a.

plomer@ sheffield.ac.uk

The Patent Paradox (I)

The current patent system “doesn‟t seem to be

delivering quite the effect on innovation and

competition it was supposed to.”

Alison Brimelow, WiPO Global Symposium, September 2009 (IPWatch, September

2009)

The „dark‟ cycle

Pendency breeds legal uncertainty

Rewards slowness and poor quality patents

Incentivizes gaming

Innovation deterred

Solutions

Increase resources and personnel

Increase cooperation and work-sharing practices

between patent offices

Substantive Harmonization

The Patent Paradox (revisited)

"All patent owners are obliged, in return for patent protection, to publicly disclose information on their

invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. In this way, patents provide not

only protection for the owner but valuable information and inspiration for future generations of researchers

and inventors.”

WIPO website

The Knowledge Transfer Problem

The existence of foundational patents on hESCs

granted by the UKIPO to the US Cie. Geron in

2005 was unknown to leading UK scientists in the

field until 2008.

UK National Stem Cell Network, Inaugural Conference, Edinburgh (2008)

Details of the claims were not readily accessible

through public databases

Nor could they be found on the Cie‟s own website at

the time.

PATENT DATA INFRASTRUCTURE

Technical limitations on search facilities

- Titles, Abstracts, Claims

Accuracy/Time-lag - can be several years

- UKIPO Technology Report on Genomic Medicine

(April 2008)

Alignment of cataloguing with the science

- IPC & ECLA codes

Towards Convergence on Prior Art?

Key lessons

Increase cooperation and work-sharing practices between

patent offices

Could assist with identification of prior art

BUT presupposes

- a high degree of substantive standardization of criteria of

novelty/inventive-step/non-obviousness

AND in emerging fields of science

- there is no clear alignment of scientific and legal criteria

AND

- knowledge transfer is hampered by suboptimal patent

information infrastructures.

Patent Boundaries and Patent Failure

Complexity of Science

Lack of Alignment between Scientific and Legal criteria

Suboptimal Patent Information Infrastructures

REGULATORY FAULTLINES

Institutions

Fragmented Global governance of IP - multiple layers of legal and quasi-legal

controls over patents

Overlapping roles of patent offices and courts

Absence of steering from the legislature.

Under-resourcing of patent offices

Sub-optimal patent information infrastructures

Uneven quality of scrutiny

Rules

Indeterminate rules on scope and validity of patents.

Divergent and inconsistent approaches by different patent offices/courts

Knock-on effects

Fuzzy patent boundaries – risk of infringement

Potential loss of market value/asset value

and associated loss of investment/liquidity for research

Blocking much more widespread as patenting one gene/cell culture

suppresses researching systems involving this gene/cell culture

No line of sight on exposures to failure

Patent system and valuations prone to catastrophic system failure

A.Plomer & P. Taylor, 'Patently Complex: Emerging Questions on Patents on Biotechnological Inventions' Complexity and Policy:

the Global Governance of New Health Technologies', ESRC Research Seminar Series, LSE, 26th November 2008.

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