Law Commons^™

Owning The New Economy: A Guide To Intellectual Property Management For Australia's Clean Technology Sector, Kane Wishart

Matthew Rimmer

Australia's history of developing and managing the intellectual property rights of domestic innovations is – at best – mixed. The relevant immaturity of Australia's public sector commercialisation infrastructure has, over recent decades, been the subject of both stinging academic commentary and not insubstantial juridical disbelief. That said, improvements have been observed, and increasingly, private sector involvement in public sector innovation has allowed for a deepening refinement of domestic approaches to IP retention and ongoing management. Rather than a bare critique of Australia's IP management track-record, or a call for specific law reform, this manual engages at a more practical level …

Intellectual Property And Biofuels: The Energy Crisis, Food Security, And Climate Change, Matthew Rimmer, Griffith Hack

Matthew Rimmer

In light of larger public policy debates over intellectual property and climate change, this article considers patent practice, law, and policy in respect of biofuels. This debate has significant implications for public policy discussions in respect of energy independence, food security, and climate change. The first section of the paper provides a network analysis of patents in respect of biofuels across the three generations. It provides empirical research in respect of patent subject matter, ownership, and strategy in respect of biofuels. The second section provides a case study of significant patent litigation over biofuels. There is an examination of the …

From Kafka To Kafta: Intellectual Property, And The Korea-Australia Free Trade Agreement, Matthew Rimmer

Matthew Rimmer

The Korea-Australia Free Trade Agreement 2014 (KAFTA) is a Kafkaesque agreement – with its secret texts, speculative claims, and shadowy tribunals. Australia and South Korea have signed a new free trade agreement - the Korea-Australia Free Trade Agreement2014 (KAFTA). Is it a fair trade fairytale? Or is it a dirty deal done dirt cheap? Or somewhere in between? It is hard to tell, given the initial secrecy of the negotiations, and the complexity of the texts of the agreement. There has been much debate in the Australian Parliament over the transparency of the trade agreement; the scope of market access …

The Anti-Economy Of Fashion: An Openwork Approach To Intellectual Property Protection, Amy L. Landers

Amy L Landers

Fashion’s cultural connections provide the groundwork for a theory to resolve the critical questions of protection for works that draw strongly on exogenous inputs. This article proposes that narrow protection for fashion is both economically justified, theoretically sound, and beneficial to the field because it facilitates spillovers in a manner that allows others to create the endless variations that are the lifeblood of this vibrant industry. Such protection relies on a theory of openworks, which applies to designs that have a high level of input from outside of the creator’s realm of activity. In fashion, inspiration that derives from the …

Trick Or Treaty? The Australian Debate Over The Anti-Counterfeiting Trade Agreement (Acta), Matthew Rimmer

Matthew Rimmer

The secretive 2011Anti-Counterfeiting Trade Agreement – known in short by the catchy acronym ACTA – is a controversial trade pact designed to provide for stronger enforcement of intellectual property rights. The preamble to the treaty reads like pulp fiction – it raises moral panics about piracy, counterfeiting, organised crime, and border security. The agreement contains provisions on civil remedies and criminal offences; copyright law and trademark law; the regulation of the digital environment; and border measures. Memorably, Susan Sell called the international treaty a TRIPS Double-Plus Agreement, because its obligations far exceed those of the World Trade Organization's TRIPS Agreement …

The Empire Of Cancer: Gene Patents And Cancer Voices, Matthew Rimmer

Matthew Rimmer

In his book, The Emperor of All Maladies, Siddhartha Mukherjee writes a history of cancer — ‘It is a chronicle of an ancient disease — once a clandestine, “whispered-about” illness — that has metamorphosed into a lethal shape-shifting entity imbued with such penetrating metaphorical, medical, scientific, and political potency that cancer is often described as the defining plague of our generation’.Increasingly, an important theme in the history of cancer is the role of law, particularly in the field of intellectual property law. It is striking that a number of contemporary policy debates over intellectual property and public health have concerned …

A Submission To The House Of Representatives Standing Committee On Social Policy And Legal Affairs On The Intellectual Property Laws Amendment Bill 2013 (Cth), Matthew Rimmer

Matthew Rimmer

The amendments contained in the Intellectual Property Laws Amendment Bill 2013 (Cth) are designed to provide safeguards in relation to patent law and the public interest.In the 2012 case on plain packaging, the Chief Justice of the High Court of Australia, Robert French, emphasized that the role of intellectual property law is to promote public objectives. His Honour observed: ‘There are and always have been purposive elements reflecting public policy considerations which inform the statutory creation of intellectual property rights.’ Discussing the role of patent law, Chief Justice Robert French commented:The Patents Act 1990 (Cth) provides that a patent gives …

What Should Be Patentable? A Proposal For Determining The Existence Of Statutory Subject Matter Under 35 U.S.C. Sec. 101, Andrew Beckerman Rodau

Andrew Beckerman Rodau

The question of what type of inventions should be protectable under patent law is a controversial issue that has received significant attention. Recent Supreme Court decisions reject a bright line test in favor of a more-opened ended approach to determining patent eligibility. Unfortunately, this provides limited guidance to lower courts and consequently the issue remains unsettled. Most inventions fit within the statutory requirements defining patent-eligible inventions. This article will examine the scope of patent-eligible subject matter defined by patent law section 101. It will look at judicial interpretation of the statute including exceptions judicially engrafted onto the statute by the …

23andme Inc.: Patent Law And Lifestyle Genetics, Matthew Rimmer

Matthew Rimmer

The venture, 23andMe Inc., raises a host of issues in respect of patent law, policy, and practice in respect of lifestyle genetics and personalised medicine. The company observes: ‘We recognize that the availability of personal genetic information raises important issues at the nexus of ethics, law, and public policy’. 23andMe Inc. has tested the boundaries of patent law, with its patent applications, which cut across information technology, medicine, and biotechnology. The company’s research raises fundamental issues about patentability, especially in light of the litigation in Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories Inc. and Association for Molecular Pathology …

Patents For Humanity, Matthew Rimmer

Matthew Rimmer

This article evaluates two policy initiatives by the United States Government to address access to essential medicines—Priority Review vouchers and “Patents for Humanity”. Such proposals are aimed at speeding up the regulatory review of inventions with humanitarian uses and applications by the United States Food and Drug Administration, and the United States Patent and Trademark Office. It is argued that such measures fall short of international standards and norms established by the World Intellectual Property Organization Development Agenda 2007; the World Trade Organization’s Doha Declaration on the TRIPS Agreement and Public Health 2001 and the WTO General Council Decision of …

A Submission To The Joint Standing Committee On Treaties On The Anti-Counterfeiting Trade Agreement 2011 (#Acta), Matthew Rimmer

Matthew Rimmer

“If Hollywood could order intellectual property laws for Christmas, what would they look like? This is pretty close.” David Fewer“While European and American IP maximalists have pushed for TRIPS-Plus provisions in FTAs and bilateral agreements, they are now pushing for TRIPS-Plus-Plus protections in these various forums.” Susan Sell“ACTA is a threat to the future of a free and open Internet.” Alexander Furnas“Implementing the agreement could open a Pandora's box of potential human rights violations.” Amnesty International.“I will not take part in this masquerade.” Kader Arif, Rapporteur for the Anti-Counterfeiting Trade Agreement 2011 in the European ParliamentExecutive SummaryAs an independent scholar …

Patent Claim Apportionment, Patentee Injury And Sequential Invention, Amy L. Landers

Amy L Landers

Reasonable royalty compensation for patent infringement is the most popular form of recovery and becomes more so every year. This may be based on the unfortunate but accurate perception that patentees can win big using the overly malleable legal standards that now govern such awards. One of the most glaring shortcomings of the standard is that it permits an award of a reasonable royalty based on doctrine that has lost touch with its statutory purpose.

This article sets forth a theory of patentee injury to establish a causative link between the inventive contribution and the reasonable royalty award. After doing …

A Proposal For A Clean Technology Directive: European Patent Law And Climate Change, Matthew Rimmer

Matthew Rimmer

This article charts the conflicted, dissonant policies of the European Union towards intellectual property and climate change. It contends that there is a mismatch between the empirical work of the European Patent Office and the quietist policy options contemplated by the European Union. This article contends that the European Union needs to develop a Clean Technology Directive to allow for a differentiated approach to patent law and clean technologies – especially given the past complicity of the European Union in global warming and climate change. It highlights essential elements in a comprehensive policy package for the reform of patent law …

Owning Omega-3: Monsanto And The Invention Of Meat, Matthew Rimmer

Matthew Rimmer

In August of 2010, Anna Salleh of the Science Unit of the Australian Broadcasting Corporation broke a story about Monsanto seeking to patent the enhancement of meat, including omega-3 fatty acids:‘Enhanced port is sparking debate over the ethics of placing patents on food. Patent applications covering the enhancement of meat, including pork with omega-3 fatty acids, are stimulating debate over the ethics and legalities of claiming intellectual property over food. Monsanto has filed patents that cover the feeding of animals soybeans, which have been genetically modified by the company to contain stearidonic acid (SDA), a plant-derived omega-3 fatty acid... Omega-3s …

The Sorcerer Ii Expedition: Intellectual Property And Biodiscovery, Matthew Rimmer

Matthew Rimmer

This article considers the significance of a leading marine biodiscovery initiative. In March 2004, Dr. J. Craig Venter announced the official launch of the Sorcerer II Expedition, a scientific expedition of discovery, which would survey marine and terrestrial microbial populations. The Expedition has the potential to uncover tens of thousands of new microbial species and tens of millions of new genes. Venter has disavowed that the Sorcerer II Expedition has any commercial ambitions. However, some have viewed the Sorcerer II Expedition with suspicion. Various civil society groups have accused the Expedition of engaging in ‘biopiracy’. This article investigates the Convention …

The Road To Copenhagen: Intellectual Property And Climate Change, Matthew Rimmer

Matthew Rimmer

The draft negotiating text on long-term co-operative action under the United Nations Framework Convention on Climate Change FCCC/AWGLCA/2009/8; the Foreign Relations Authorization Act, Fiscal Years 2010 and 2011 HR 2410 (United States); the American Clean Energy and Security Act of 2009 HR 2454 (United States); the Foreign Operations, and Related Programs Appropriations Act 2010 HR. 3081 (United States); and the TRIPS Agreement 1994.In the lead-up to the discussions over IP and climate change in Copenhagen in 2009, the US House of Representatives passed a resolution that it should be the policy of US government officials in discussions over the long-term …

A Submission To The Senate Community Affairs Committee Inquiry Into Gene Patents, Matthew Rimmer

Matthew Rimmer

I am a senior lecturer and the associate director for research at the Australian National University College of Law based in Canberra, Australia. I am also an associate director of the Australian Centre for Intellectual Property in Agriculture (ACIPA). I have a BA (Hons) and a University Medal in literature, and a LLB (Hons) from the Australian National University, and a PhD in law from the University of New South Wales. I am a member of the Copyright and Intellectual Property Advisory Group of the Australian Library and Information Association, and a director of the Australian Digital Alliance. I am …

Patent Trolls And Patent-Busters, Matthew Rimmer

Matthew Rimmer

Once upon a time, Abraham Lincoln famously said that the patent system was intended to secure "to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things."In recent times, there have been concerns that the patent system been abused by opportunistic companies known by the phrase "patent trolls". It has been alleged that such entities have stunted innovation and spurred unnecessary patent litigation.There have been particular fears about the rise of "patent trolls" in the field …

Get Rid Of The Patent Absurdities, Matthew Rimmer

Matthew Rimmer

AUSTRALIA'S patent laws need to be updated for the 21st century to accommodate a range of frontier technologies in the life sciences.Recently J. Craig Venter and his institute filed a patent application in respect of a minimal bacterial genome that they have dubbed Mycoplasma laboratorium.The contentious scientist declared: "My company, Synthetic Genomics Inc, is already trying to develop cassettes - modules of genes - to turn an organism into a bio-factory that could make clean hydrogen fuel from sunlight and water or soak up more carbon dioxide." The ETC Group, a bunch of Canadians opposed to synthetic biology, has dubbed …

Patent Carrots And Sticks: An Economic Model Of Nonobviousness, Michael J. Meurer, Katherine J. Strandburg

Katherine J. Strandburg

The authors develop an informal model of the impact of the nonobviousness standard on the choice of research projects. Previous models assume that the basic question confronting a researcher is, “Shall I produce this particular invention?” More realistically, the authors think a researcher asks, “Which research path shall I pursue?” The model shows that a patent serves as a carrot to induce the choice of more difficult projects than would be pursued under the no-patent alternative. The nonobviousness standard serves as a stick to prod researchers to choose even more difficult projects. The results of the model help us understand …

What If There Were A Business Method User Exemption To Patent Infringement?, Katherine J. Strandburg

Katherine J. Strandburg

The Federal Circuit’s decision in State Street Bank & Trust Co. v. Signature Financial Group Inc. that business methods are patentable is nearly ten years old, yet the wisdom of patenting business methods remains highly debatable. For example, three Supreme Court justices recently have questioned State Street Bank’s “useful, concrete, and tangible result” test for patentable subject matter. Many commentators have also debated the patenting of business methods, questioning whether patents are necessary to spark innovation in methods of doing business and whether exclusive rights to business methods are impediments to a competitive economy. This short Symposium piece seeks to …

The Genographic Project: Traditional Knowledge And Population Genetics, Matthew Rimmer

Matthew Rimmer

This article considers the debate over patent law, informed consent, and benefit-sharing in the context of biomedical research in respect of Indigenous communities. In particular, it focuses upon three key controversies over large-scale biology projects, involving Indigenous populations. These case studies are representative of the tensions between research organisations, Indigenous communities, and funding agencies. Section two considers the aims and origins of the Human Genome Diversity Project, and criticisms levelled against the venture by Indigenous peak bodies and anti-biotechnology groups, such as the Rural Advancement Foundation International. It examines the ways in which the United Nations Educational, Scientific, and Cultural …

The Hong Kong Amendment To The Trips Agreement: A Submission To The Joint Standing Committee On Treaties., Matthew Rimmer

Matthew Rimmer

In the wake of the Doha Declaration on the TRIPS Agreement and Public Health 2001 and the WTO General Council Decision 2003, there is a need for industrialised nations to implement legislation to enable the export of pharmaceutical drugs to address public health concerns.I would argue that the Patents Act 1990 (Cth) should make provision for the grant of a compulsory licence over a patented invention in circumstances of ‘a national emergency or other circumstances of extreme urgency, or in cases of public non-commercial use’. Such a measure is necessary to deal with the possibility of public health epidemics that …

The Research Exemption To Patent Infringement: The Delicate Balance Between Current And Future Technical Progress, Katherine J. Strandburg

Katherine J. Strandburg

No abstract provided.

Debate, The Obviousness Requirement In The Patent Law, R. Polk Wagner, Katherine J. Strandburg

Katherine J. Strandburg

In this debate, Professor R. Polk Wagner, of Penn, and Professor Katherine J. Strandburg, of DePaul University College of Law, consider the merits (and demerits) of one doctrinal approach to the so-called "obviousness" requirement in patent law--the "teaching, suggestion, or motivation" (TSM) test. In Wagner's view, "even with its imperfections, the law and policy of the TSM analysis, done right, offers the best opportunity to bring predictability, transparency, and rigor to what is, at the end of the day, the enormously difficult task of quantifying what the patent law rewards as invention." For reasons she explains, Strandburg maintains that "the …

What Does The Public Get? Experimental Use And The Patent Bargain, Katherine J. Strandburg

Katherine J. Strandburg

This article deals with the increasing tension between the tradition of protecting commercially valuable inventions through patenting and the need for a robust public domain of freely available technical information as a springboard for further research. The “experimental use exemption,” permitting some unauthorized research uses of patented inventions, might be used to relieve some of this tension. However, the scope of the research exemption has been shrunk so far by recent Federal Circuit opinions that even basic university research is not excused from infringement liability. This article returns to the first principles of patent law -- the incentives to invent …

Patents And Experimental Use: A Submission To The Advisory Council On Intellectual Property., Matthew Rimmer, Krishna Rajendra

Matthew Rimmer

As part of its policy activities, ACIPA hosted a symposium, "Freedom To Tinker: Patent Law and Scientific Research", on the 19th March 2004. This symposium considered whether Australian patent law should have a defence for research use, and, if so, what its scope should be. It explored the impact of such an exemption upon a number of important industries - such as agriculture, biotechnology, health care, and information technology. It also examined the repercussions of such a defence for universities, research organisations, and educational institutions.Strikingly, there has a great deal of consensus amongst the government speakers at the symposium. Mr …

Blame It On Rio: Biodiscovery, Native Title, And Traditional Knowledge, Matthew Rimmer

Matthew Rimmer

This article examines the legal responses to protect traditional knowledge of biodiversity in the wake of the Rio Convention on Biological Diversity. It considers the relative merits of the inter-locking regimes of contract law, environmental law, intellectual property law, and native title law. Part 1 considers the natural drug discovery industry in Australia. In particular, it looks at the operations of Amrad, Astra Zeneca R & D, and the Australian Institute of Marine Science. This section examines the key features of the draft regulations proposed under the Environment Protection and Biodiversity Conservation Act 1999 (Cth) - model contracts, informed consent, …

The Attack Of The Clones: Patent Law And Stem Cell Research, Matthew Rimmer

Matthew Rimmer

This article considers the integral role played by patent law in respect of stem cell research. It highlights concerns about commercialization, access to essential medicines and bioethics. The article maintains that there is a fundamental ambiguity in the Patents Act 1990 (Cth) as to whether stem cell research is patentable subject matter. There is a need to revise the legislation in light of the establishment of the National Stem Cell Centre and the passing of the Research Involving Embryos Act 2002 (Cth). The article raises concerns about the strong patent protection secured by the Wisconsin Alumni Research Foundation and Geron …

Genentech And The Stolen Gene: Patent Law And Pioneer Inventions, Matthew Rimmer

Matthew Rimmer

This paper evaluates the litigation over the biotechnology patent dispute between the University of California and Genentech. First it outlines the scientific work behind the cloning of the human growth hormone, and looks at the patent office, and its treatment of biotechnological inventions. Second, it considers the court room dispute, and the legal case of the University of California and the biotechnology company in this dispute. Finally, it considers the implications of this dispute for policy reform in respect of patent law and biotechnology.