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Professional And Academic Employee Inventions: Looking Beyond The Uk Paradigm, Justine Pila Jan 2012

Professional And Academic Employee Inventions: Looking Beyond The Uk Paradigm, Justine Pila

Justine Pila

The vast majority of inventions are devised by employees, raising the question who is entitled to patent them? Under the UK Patents Act 1977, the right to patent an invention lies primarily with its inventor(s). However, an exception exists for employee inventions to which section 39(1) applies. The recent decision of the Full Court of the Federal Court of Australia in UWA v Gray raises the question of the applicability of this provision in the university context, in respect of regular academic employees. In that case, the Court relied on UK authorities to support its conclusion that the ...


Copyright And Internet Browsing, Justine Pila Jan 2012

Copyright And Internet Browsing, Justine Pila

Justine Pila

No abstract provided.


‘Sewing The Fly Buttons On The Statute:’ Employee Inventions And The Employment Context, Justine Pila Jan 2012

‘Sewing The Fly Buttons On The Statute:’ Employee Inventions And The Employment Context, Justine Pila

Justine Pila

Section 39(1) of the Patents Act 1977 governs the ownership of inventions devised by employees in the course of their employment. Introduced ‘to codify in a few lines the accumulated common law experience’ prior to 1977, it does not expressly differentiate between employment fields, and has been widely assumed to apply indiscriminately, without regard to the particular context of employment. The purpose of this article is to revisit that assumption. In the argument made, section 39(1) was built around a private sector paradigm the courts’ departure from which is supported by a ‘rational reason’ in the Shanks v ...


Patent Eligibility And Scope Revisited After Schütz V. Werit, Justine Pila Jan 2012

Patent Eligibility And Scope Revisited After Schütz V. Werit, Justine Pila

Justine Pila

This chapter responds to the contribution of Professor Ted Sichelman in the same volume by reconsidering the UK courts’ method of determining patent scope. Using my earlier work regarding the role of eligibility as a determinant of patent scope as the departure point for that reconsideration, I argue that the theory of “patent eligibility scope” proposed in Sichelman’s chapter runs against the grain of UK patent jurisprudence by virtue of its uncertain and open-ended policy nature, and is therefore unlikely to be accepted by the UK courts. On the other hand, recent UK cases such as Schütz v. Werit ...


Intellectual Property Rights And Detached Human Body Parts, Justine Pila Jan 2012

Intellectual Property Rights And Detached Human Body Parts, Justine Pila

Justine Pila

This paper responds to an invitation by the editors to consider whether the intellectual property (IP) regime suggests an appropriate model for protecting interests in detached human body parts. It begins by outlining the extent of existing IP protection for body parts in Europe, and the relevant strengths and weaknesses of the patent system in that regard. It then considers two further species of IP right of less obvious relevance. The first are the statutory rights of ownership conferred by domestic UK law in respect of employee inventions, and the second are the economic and moral rights recognized by European ...


Some Reflections On Method And Policy In The Crowded House Of European Patent Law And Their Implications For India, Justine Pila Dec 2011

Some Reflections On Method And Policy In The Crowded House Of European Patent Law And Their Implications For India, Justine Pila

Justine Pila

This article considers the appropriate method for assessing substantive principles of European patent law, including limits on European patentability. In the argument made, European patent law is a crowded house in which “substantive convergence” around principles is inevitable but unsatisfactory: it will generally be the product of complex institutional dynamics as much as principled policy making, and in the absence of unified methodology and values will fail to ensure coherence or consistency within the European patent system. The implications of this argument with respect to India are then considered, and some reflections offered regarding India's experience of patent law ...


The Future Of The European Requirement For An Invention: Inherent Patentability As A Pre- And Post-Patent Determinant, Justine Pila Jan 2011

The Future Of The European Requirement For An Invention: Inherent Patentability As A Pre- And Post-Patent Determinant, Justine Pila

Justine Pila

The purpose of this chapter is to develop the reflections contained in the conclusion of a recent book (The Requirement for an Invention in Patent Law (Oxford: OUP, 2010)). Specifically, it is to propose a method for applying the requirement for an invention under Article 52(1) of the EPC, including a definition of the invention itself. I argue that while the proposal does not solve all definitional and methodological issues regarding that requirement, it is nonetheless justified on four central grounds. First, it reorients the European patent system around its central aim of supporting industrial growth. Second, it explains ...


Software Patents, Separation Of Powers, And Failed Syllogisms: A Cornucopia From The Enlarged Board Of Appeal Of The European Patent Office, Justine Pila Dec 2010

Software Patents, Separation Of Powers, And Failed Syllogisms: A Cornucopia From The Enlarged Board Of Appeal Of The European Patent Office, Justine Pila

Justine Pila

The decision of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) in G_0003/08 regarding the patentability of computer programs under the European Patent Convention (EPC) is considered, and the grounds for the EBA’s rejection of the President’s referral on the computer programs exclusion of Article 52(2)(c) & (3) analysed. An argument is made that the basis for that rejection is an interpretation of the President’s power of referral under Article 112(1)(b) EPC that is inconsistent with Articles 31–33 of the Vienna Convention, and that offends the constitutional principles ...


Academic Freedom And The Courts, Justine Pila Jan 2010

Academic Freedom And The Courts, Justine Pila

Justine Pila

Recent events in the United Kingdom have focused attention on the protection at law of institutional and individual academic freedom. While such freedoms sit in tension, they share a basis in the liberal ideal of the pursuit of truth through teaching, discussion and research. It is a truism that this ideal is currently under threat, and with it academic freedom itself. The source of the threat is complex and varied, but includes changes in the economy, scientific research, and British higher education policy. One result of these changes has been what W R Cornish described in 1991 as “a rising ...


An Australian Copyright Revolution And Its Relevance For Uk Jurisprudence: Icetv In The Light Of Infopaq V Danske, Justine Pila Jan 2010

An Australian Copyright Revolution And Its Relevance For Uk Jurisprudence: Icetv In The Light Of Infopaq V Danske, Justine Pila

Justine Pila

The purpose of this paper is to consider the High Court of Australia’s decision in IceTV v Nine Network (2009) and its relevance for UK copyright jurisprudence, taking account of the ECJ's decision in Infopaq v Danske (2009). The starting point for that consideration is the principle expressed by the Court of Appeal in Higgs v R (2008), that UK courts may rely on the reasoning of Australian and other foreign decisions when the logic of those decisions makes them applicable. On its face, IceTV seems an important decision, and a likely source of future reasoning for UK ...


Patents For Genes And Methods Of Analysis And Comparison, Justine Pila Jan 2010

Patents For Genes And Methods Of Analysis And Comparison, Justine Pila

Justine Pila

In March 2010, a United States (U.S.) District Court held that isolated human genes are “products of nature”, and methods of analysis and comparison “abstract mental processes”, for which a US patent cannot validly be granted. Its decision undermined U.S. patent granting practices, and widens the gap between U.S. and European law on what constitutes inherently patentable subject matter (“inventions”) and a proportionate patent grant. In this note I consider the case – AMP v USPTO – and its implications for European patent law.


Who Owns The Intellectual Property Rights In Academic Work?, Justine Pila Jan 2010

Who Owns The Intellectual Property Rights In Academic Work?, Justine Pila

Justine Pila

In this Opinion piece the ownership of intellectual property rights in university teaching and research is considered against the backdrop of British university intellectual property policies and recent cases. Starting from the position of Lord Evershed that it is "just and commonsense" that academics own the copyright in their lectures, and by extension the copyright in their research, I consider the policy arguments for university claims of ownership in respect of such copyright and academic employees' inventions.


Copyright And Its Categories Of Original Works, Justine Pila Jan 2010

Copyright And Its Categories Of Original Works, Justine Pila

Justine Pila

In this paper the categories of original (literary, dramatic, musical and artistic (LDMA)) works in which copyright subsists are considered, and an argument made that the Legislature's division of protected works into categories is appropriate given the psychology of art appreciation, and the fact that in order to perceive a work qua work one must perceive it in relation to a category of work. Nonetheless, an argument is also made that the statutory definitions of LDMA works suffer from the defects of formalist theory. Those defects are outlined, and an alternative theory of works proposed, drawing on the work ...


The Requirement For An Invention In Patent Law, Justine Pila Dec 2009

The Requirement For An Invention In Patent Law, Justine Pila

Justine Pila

This book offers an analysis of legal conceptions of the invention in UK patent law and their development from before the first English patent legislation of 1623 through the patent system’s recent phase of Europeanization. Its publication comes at a time of widespread uncertainty regarding the invention, which is the basic subject matter of patent protection in all jurisdictions, and the meaning of which is currently under review by the US Supreme Court, the Enlarged Board of Appeal of the European Patent Office, and the Australian Government. The central thesis of the book is that properly construed, the requirement ...


Works Of Artistic Craftsmanship In The High Court Of Australia: The Exception As Paradigm Copyright Work, Justine Pila Jan 2009

Works Of Artistic Craftsmanship In The High Court Of Australia: The Exception As Paradigm Copyright Work, Justine Pila

Justine Pila

In Burge v Swarbrick, the High Court of Australia delivered an important decision on the most elusive of works protected by copyright: the work of artistic craftsmanship (WAC). Drawing on the history and reasons for that protection, and adopting the analysis of Lord Simon in Hensher, the Court affirmed the orthodox view that such works have 'special status' in law on account of their 'real artistic quality'. In its judgment, whether a work has that quality depends on whether it is a work of craftsmanship the artistic form of expression of which is sufficiently 'unconstrained by functional considerations'. In this ...


Authorship And E-Science: Balancing Epistemological Trust And Skepticism In The Digital Environment, Justine Pila Jan 2009

Authorship And E-Science: Balancing Epistemological Trust And Skepticism In The Digital Environment, Justine Pila

Justine Pila

In this article I consider the role of authorship in balancing epistemological trust and skepticism in e-science. Drawing on studies of the diagnostic practices of doctors in British breast care units and the gate-keeping practices of a Californian publisher of (professional and amateur) horticultural works, I suggest that conventions of authorial designation have an important role to play in nurturing the skepticism essential for scientific rigor within the framework of epistemological trust that pragmatism and morality require. In so doing I question the assumption of contemporary scholars that scientific works are determinate in fact, while nonetheless supporting the idea of ...


Article 53(B) Epc: A Challenge To The Novartis Theory Of European Patent History, Justine Pila Jan 2009

Article 53(B) Epc: A Challenge To The Novartis Theory Of European Patent History, Justine Pila

Justine Pila

In this article the authoritative ('Novartis/transgenic plant systems') interpretation of the Article 53(b) EPC exclusion from European patentability of plant and animal varieties, and essentially biological processes for the creation of plants and animals, is considered, and its significance for the trend of EPO jurisprudence and legitimacy of the EC Biotechnology Patenting Directive noted. The Enlarged Board of Appeal's justification for that interpretation in 'Novartis' with reference to the exclusion's legislative history is challenged, and an alternative theory of that history proposed, based on a thorough analysis of the unpublished 'travaux preparatoires' for the Strasbourg and ...


Chemical Products And Proportionate Patents Before And After Generics V Lundbeck, Justine Pila Jan 2009

Chemical Products And Proportionate Patents Before And After Generics V Lundbeck, Justine Pila

Justine Pila

In Generics Ltd v Lundbeck A/S (2009) UKHL 12, the House of Lords affirmed the validity of a patent for a chemical product - an isolated stereoisomer - supported by a method of producing the product, but protecting the chemical product as such independent of the method by which it was made. In so doing, it appears to have resolved a longstanding tension between granting patents for chemical products and requiring that the scope of monopoly rights equiperate with the disclosure in the specification. It also appears to have rejected the Biogen Inc v Medeva plc (1997) RPC 1 (HL) view ...


An Intentional View Of The Copyright Work, Justine Pila Jan 2008

An Intentional View Of The Copyright Work, Justine Pila

Justine Pila

The questions at the heart of copyright – what is a work, and the extent of copyright protection – are considered. Arguments are presented firstly for an understanding of works oriented around expressive intent, and secondly for a statutory test of infringement that pays closer attention to issues of policy and the authorial acts that copyright rewards. The article revisits two central cases of modern English copyright law, Walter v Lane and Interlego v Tyco Industries, and suggests that their reasoning is problematic; Walter v Lane because the transcripts of Lord Rosebery's speeches were not books for copyright purposes, and Interlego ...


Compilation Copyright: A Matter Calling For ‘A Certain ... Sobriety’, Justine Pila Jan 2008

Compilation Copyright: A Matter Calling For ‘A Certain ... Sobriety’, Justine Pila

Justine Pila

In this article I review the UK and Australian law of compilation copyright in the light particularly of the Australian Full Federal Court's decisions in Desktop Marketing Systems (2002) and IceTV (2008). I criticize the Court's approach in those cases to the issues of both subsistence and infringement, while also offering a measured defense of the first instance decision in IceTV. In particular, I suggest that decision is largely right, and reflects an important attempt by a Judge to reorient copyright around its works, and resist the past temptation of courts - including the Full Federal Court itself - to ...


Dispute Over The Meaning Of ‘Invention’ In Article 52(2) Epc: The Patentability Of Computer-Implemented Inventions In Europe, Justine Pila Jan 2005

Dispute Over The Meaning Of ‘Invention’ In Article 52(2) Epc: The Patentability Of Computer-Implemented Inventions In Europe, Justine Pila

Justine Pila

In 2002, the European Economic and Social Committee (ESC) described the doctrinal premise of the European Patent Office´s interpretation of Art. 52(2) of the European Patent Convention as "the product of legal casuistry". The purpose of the current article is to consider that description, and ask whether it is fair, or whether the EPO´s approach to Art. 52 is better ascribed to problems inherent in the EPC itself. Three issues are addressed to that end. The first is the object of the ESC´s criticism: Art. 52(2) and its interpretation by the EPO´s Boards of ...