navigating the patent maze

The latest amendment to the 1970 Patent Act of India (effective 1 January 2005) brings the law into compliance with TRIPS.   One of the major changes was to allow patents for methods and pharmaceutical patents; previously only certain products were patentable.  In addition embedded software that has technical applications can now be patented.  Procedural changes implemented include those at both pre-grant and post-grant opposition and reducing the time limit to request exam

to 3 years.

(more…)

Yours truly, along with two agricultural economists (Phil Pardey of University of Minnesota and Bonwoo Koo of IFPRI), have published an article in this week’s Science journal.  If you have an account, you can view the article on-line.  Because journals hold the copyrights, I will ask for permission to post a copy here.

Summary:  Much of the debate on the implications of intellectual property (IP) for protecting plant varieties occurs in the absence of an understanding of the specifics of the rights in particular jurisdictions, a practical sense of the rights claimed or granted, and their evolution over time. Moreover, existing information highlights rich-country developments, with little attention to developing countries. This Policy Forum reviews the approaches to plant-related IP protection worldwide, with data on the applications of plant breeders’ rights, and discusses possible implications of IP protection for food production and human health.

A court may use the Doctrine of Equivalents (DOE) to find infringement when no literal infringement of the claims exists. The policy behind the DOE is to balance the rights of the patentee with a fair degree of certainty for third parties. The DOE weighs in by basically disallowing an infringer who makes a trivial change in the invention in order to escape infringement. What constitutes a trivial change depends heavily on the facts.

In a hypothetical example, it works like this:
- Claim 1: An isolated protein having the amino acid sequence presented in Figure 1.
- Alleged infringing product: An isolated protein that has the sequence of Figure 1, except for a single amino acid change.
- Literal infringement?: NO, because the claim requires the precise DNA sequence as shown in Figure 1.
- DOE?: MAYBE. A major factor bearing on the decision is whether the protein still functions the same way.

Some form of DOE exists in many countries, e.g., Japan and the United States, although the DOE has recently been highly reined-in in the United States. Now, the House of Lords in England has considered DOE in a case called Kirin Amgen and concluded that the DOE is not consistent with the European Patent Convention and has dealt the doctrine a death knell in England.

Even though China’s patent law is only 20 years old, the system appears to be catching on in a big way. In 2003, over 300,000 patent applications were lodged (in comparison, in the U.S. there were ~355,000 applications filed in 2003). Lest you think that it is mainly foreigners taking advantage of the system, only ~55,000 of the 300,000 were filed by foreigners. Except that in China there are two classes of patents, “utility model” (more akin to innovation patents in Australia, petty patents elsewhere, and without equivalent in the U.S.) and ‘invention” patents (akin to utility patents in the U.S.). In the category of invention patents, foreigners dominate.

For more information, view a PowerPoint presentation on China’s patent laws and enforcement.

By this time, most of you have heard that ‘Monsanto won’ over Percy Schmeiser in the Canadian Supreme Court. Actually, Mr Schmeiser was found to have infringed Monsanto’s patent but no damages were assessed. It was a close decision and a momentous one for two main reasons. Several commentators have written about how genetically-engineered plants are essentially, if not expressly, protectable because of the gene introduced. In another blog entry, I will discuss that issue. For this entry, however, I raise the possibility that the Court has defined “use” of a patented invention in such a way that that there may now be an exemption for basic science research in Canada.
Monsanto Canada Inc v Schmeiser 2004 SCC 34.
(more…)

The cambia IP site has posted a new white paper (patent landscape analysis) on “Resistance to Phosphinothricin” as well as a new tutorial called “Can IP rights protect plants?“.

According to an IPS News article (dated 10 Feb 2004) Monsanto has decided to suspend sales of genetically modified (GM) soybean in Argentina. Argentina is the 3rd largest producer of soybean, behind Brazil and the US. The article says competition from black market sales of GM soy in Argentina is the reason Monsanto has ceased both sales of GM soy and all further R&D on GM soybean within Argentina.

Although farmers are entitled to cull seeds for the use of replanting new crops (Argentina’s 1973 seed law), the problem is the illegal sales of culled GM soybean seeds on the black market. Farmers argue the problem is not from small- or medium-sized farms selling culled GM seeds. Instead, the farmers say that they do not have the large scale seed infrastructure that would be required to produce the current large volumes of black market GM seeds. Furthermore, the farmers contend that the huge growth in black market sales indicates that the current controls and enforcement procedures are not adequate, and moreover it should be dealt with by the Argentine government.