国家资助项目职务发明权利配置的法经济探析

国家资助项目中职务发明权利配置面临诸多法律法规与行政规章的规范竞合,其规范适用效果须以其能否有效促进其职务发明权利流转为判定基准,其效率价值实现有赖增进其职务发明权利流转、减小其交易成本、确保利益受损者获得有效补偿,完善其有关制度安排须明晰其职务发明权属的法定范围,完备其职务发明人的优先申请、优先受让与优先实施专利等法定权利,强化其职务发明人的法定义务。     

“Great Men,” Law,and the Social Construction of Technology

Is Alexander Graham Bell's fame owed to law and lawyers? Two recent histories argue that some popular tales of invention originated with lawyers and judges as part of patent litigation battles (Stathis Arapostathis and Graeme Gooday , Patently Contestable: Electrical Technologies and Inventor Identities on Trial in Britain [2013]; Christopher Beauchamp , Invented by Law: Alexander Graham Bell and the Patent That Changed America [2015]). Bringing law into the historical project of understanding the social construction of technology, the authors unsettle “great man” narratives of invention. A tale of a recent patent war is a case study in the persistence of such narratives, highlighting the uses of legal storytelling (Ronald K. Fierstein , A Triumph of Genius: Edwin Land, Polaroid, and the Kodak Patent War [2015]). Together, these works invite consideration of the cultural power possessed by invention origin stories, the role of narratives in law and history, and the judicial performance of truth finding in Anglo‐American law .     

Design protection for technical products

Legal context. The shape and the function of a product are oftenclosely related (‘form follows function’) whichopens the way for double protection of novel features by a patentand a design. The simultaneous application for both rights canbe done in a fast and cost efficient way by using the figuresof the patent application for the design registration. Key points. With this in mind, the design registration may notcover the novel features in its broadest terms, since designlaw does not apply to ideas, concepts, or methods. However,the design provides protection for a concrete embodiment andthereby offers some relief for a patent applicant in need ofimmediate action against copying. Although, certain conditionshave to be observed where simultaneous protection is sought,there is no doubt that a patent covering an invention in itsgeneral form and a registered design protecting a specific embodimentof the invention may coexist with no mutual negative effectto their respective validity. Practical significance. Having an enforceable protection rightfor an embodiment of an invention at hand a long time beforethe corresponding patent is granted is a valuable asset in anIP portfolio. The additional costs incurred by a design registrationare insignificant in comparison with the costs for the patent.     

完善知识产权制度 优化自主创新环境

自主创新的关键在于"自主",而"自主"有赖于知识产权法律制度的保护,因此,完善知识产权法律保护制度是优化自主创新环境、保护和激励自主创新的关键所在。在不到三十年的时间里,我国建立并极大地发展了知识产权法律制度,但由于起步较晚,尚有诸多不完善的地方。笔者认为:就我国职务发明保护制度来说,发明人应成为职务发明的原始权利人,并有申请专利的权利;就我国驰名商标保护制度来说,应引入驰名商标淡化理论,制定专门法律,加大对驰名商标的保护;就我国的商业秘密保护制度来说,应制定一部专门的商业秘密保护法,明确规定商业秘密的保护范围和构成条件,增加事前预防手段,加大事后处罚力度,同时,还要完善网络环境下商业秘密保护方面的规定。     

House of Lords simplifies the law on patent entitlement

The House of Lords has held that, to claim entitlement to another'spatent or patent application, a person need only prove thathe was the inventor of the subject-matter of the patent, anddoes not also need to invoke ‘some other rule of law’as required previously by the Court of Appeal in Markem v Zipher[2005] RPC 31.     

专利无效补偿机制之探讨

以提高创新能力、促进技术进步和经济社会发展为宗旨的专利法,为专利申请人设立了许多权利与义务,在申请程序与核准后随之而来的义务之一则是费用缴纳成本,包含申请、审查以及维护专利存在的年费等。若专利权后来被无效确定后能够在合理范围内将部分曾经缴纳的费用适当地返还于原权利人,则有利于使发明创造者更愿意将其技术方案申请专利并积极地进行新的发明创造,从而推动科学进步和经济社会发展。     

The contractual alternative to patents

A patent grants the holder a monopoly over the use of the patented invention for a specified time period. Although economists are generally opposed to monopoly, there seems to be a general consensus that the patent system is desirable.¹ The rationale for the patent system is that without ownership rights in inventions, there would not be optimal allocation of resources to inventive activities, just as with any other valuable resource over which there are not well-defined property rights. However, the patent system, since it confers monopoly rights, has its drawbacks as well. If independent parties are working simultaneously toward an invention, the first to produce the invention will receive a monopoly over its use, even though others may have been only a month behind. This may encourage inventors to work too intensively toward a patent, and could also have the effect of producing monopoly in a market that was characterized by competition before the patent was issued. In addition, competitors have an incentive to develop substitute processes to avoid infringement of the patent, when the use of the patented process would be more economical. A substitute for patents which provides ownership rights in an invention without governmental grant of a monopoly is the trade secret. The purpose of this paper is to introduce and develop the idea of the law of trade secrets as a contractual alternative to patents.     

专利技术的在先使用问题研究

在我国专利法中 ,仅对外观设计专利 ,第二十三条规定明确了授予专利权的外观设计不得与他人在先取得的合法权利相冲突 ,而对发明和实用新型专利没有做出明确规定。这是否意味着对于发明专利和实用新型专利不存在在先权原则制约 ?如果对此两类专利不存在在先权制约 ,如何理解适用专利法第六十三条第二款规定的 ,在专利申请日前已经制造相同产品、使用相同方法或者已经做好制造、使用的必要准备 ,并且仅在原有的范围内继续制造、使用的不视为侵犯专利权 ?不视为侵权的行为属于对专利权的合理使用还是专利权的取得不得损害他人在先权利 ?不解决上述问题 ,就无法分清实践中专利技术的在先使用和专利侵权的界限 ,由此可能导致截然不同的法律后果。本文作者以程序法的视角和保护知识产权国际公约协定确立的基本原则为背景 ,从明确保护专利技术的在先使用权、专利技术在先使用权抗辩专利权的法律适用、专利技术在先使用权的效力地位及保护途径三个方面来探讨解决上述问题。     

技术在先使用与专利权冲突的探讨

在我国专利法中,仅对外观设计专利,在第23条规定了授予专利权的外观设计不得与他人在先取得的合法权利相冲突,而对发明和实用新型专利没有做出明确规定。这是否意味着对于发明专利和实用新型专利不存在在先权原则制约?如果对此两类专利不存在在先权制约,如何理解适用专利法第63条第2款规定的,在专利申请日前已经制造相同产品、使用相同方法或者已经做好制造、使用的必要准备,并且仅在原有的范围内继续制造、使用的不视为侵犯专利权?不视为侵权的行为属于对专利权的合理使用还是专利权的取得不得损害他人在先权利?不解决上述问题,就无法分清实践中专利技术的在先使用和专利侵权的界限,由此可能导致截然不同的法律后果。以程序法的视角和保护知识产权国际公约协定确立的基本原则为背景,从明确保护专利技术的在先使用权、专利技术在先使用权抗辩专利权的法律适用、专利技术在先使用权的效力地位及保护途径三个方面来探讨解决上述问题。     

Who Develops a University Invention? The Impact of Tacit Knowledge and Licensing Policies

In this paper, I propose a theoretical model to illustrate how the inventor know-how affects whether the inventor starts a firm to develop her idea or licenses an invention to an established firm for development. Inventor start-ups are characterized as development organizations that serve a temporary role in the invention–innovation process, developing an invention until they can sell the developed invention to an established firm that owns requisite complementary assets for commercialization. This model is then used to analyze the role and impact of a university technology transfer office (TTO) on this process to understand how TTO’s may both positively and negatively impact the transaction. The model posits a general theory of inventor–entrepreneur behavior in university and corporate research labs based on two factors: the importance of know-how and the distribution of inventors’ personal costs to transfer that know-how.     

Markem v Zipher--the Court of Appeal provides guidance on entitlement proceedings

Legal and practical context. The Markem v Zipher Court of Appealjudgment provides useful guidance on patent entitlement proceedingsand, more generally, on the conduct of litigation. Key points. (i) Patent entitlement. To bring an entitlementaction under sections 8, 12, and 37 a party must invoke a breachof some rule of law. Validity is only relevant in entitlementproceedings where a patent or part of it is clearly and unarguablyinvalid. A claim-by-claim approach is not appropriate in proceedingsunder sections 8, 12, and 37 and ‘invention’ inthese sections refers to information in the specification. Theproper approach to entitlement should be to identify who contributedto the invention and determine whether he has any rights tothe invention. (ii) Litigation generally. A witness should be cross-examinedas to the truthfulness of his evidence whenever a party wishesto challenge that evidence. Where a party has more than onecause of action relating to the same factual background, considerationshould be given to bringing all causes of action in the sameproceedings to avoid a future claim being struck out for abuseof process. Practical significance. This case highlights the importanceof a properly pleaded case and of the ongoing need to reviewthe case strategy throughout proceedings.     

Universities and Patent Demands

Research universities have made enormous contributions to the field of medicine and the treatment of human disease. Alone or in collaboration with pharmaceutical companies, academic researchers have added to the store of knowledge that has led to numerous life science breakthroughs. A new chapter may be opening for academic researchers, however, that could lead to a darker tale. ‘The mouse that trolled: the long and tortuous history of a gene mutation patent that became an expensive impediment to Alzheimer''s research, by Bubela et al., chronicles one such tale.’ The authors do an excellent job of bringing to life the twisting saga that engulfed numerous academic and non-profit Alzheimer''s researchers over many years. The authors note that the story is an outlier, but sadly, that may not be the case. There are increasing signs that academic researchers and their institutions are being caught up in the rush for gold that is accompanying the proliferation of the non-practicing entity business model. As I have noted before, academic institutions have a dual role, as keepers of the academic flame and guardians of the public monies entrusted to them through state and federal research funding. The specter of taxpayer money being used, not to advance research and for the betterment of society, but as part of schemes to extract money from productive companies may not sit well with voters, and ultimately, with legislators. In that case, researchers and institutions themselves may have much to lose.‘The Mouse that Trolled: The Long and Tortuous History of A Gene Mutation Patent That Became an Expensive Impediment to Alzheimer''s Research’ describes an important case in which a gene mutation patent, owned by a non-practicing entity, was asserted against researchers studying the causes and effects of Alzheimer''s disease. Non-practicing entities (NPEs) are parties whose core activity involves licensing or litigating patents, rather than making products. The article details nearly two decades of litigation—targeted at universities, foundations, and non-profits—and illustrates the immeasurable damage to disease research caused by the battle. Although the authors examine a single example of an NPE targeting biopharmaceutical research, observational evidence suggests that such cases will be neither rare nor uncommon across time, raising concerns about the way in which the public interest may be lost along the way. Particularly troubling is the possibility that universities themselves may increasingly partner with NPEs, in an effort to join the patent gold rush.Universities play a dual role in society, serving both as keepers of the academic flame and as guardians of society''s money. State and federal governments entrust universities with substantial amounts of research funding in the hope that academic minds can contribute to the store of knowledge that will lead to societal improvements in human health, technology, and other fields. And universities have, indeed, made profound contributions to knowledge and innovation, from which all of society has benefitted. In fact, in an effort to facilitate the translation of academic research into products for society, Congress adopted the 1980 Bayh-Dole Act.¹ Prior to Bayh-Dole, commentators had complained that the ‘return on investment’ from public research funding for universities failed to justify the dollars spent.² Bayh-Dole attempted to rectify that problem by allowing universities to control patenting and licensing of inventions created with federal money.³ The goal was to facilitate the creation of actual products from the storehouse of knowledge resulting from public funding of university research. In keeping with the idea that universities are trustees of public resources, Bayh-Dole created an environment in which universities would foster innovation through the commercial application of its patents.Bayh-Dole flowed from the basic principle that patents are granted, not solely to reward the inventor, but rather to incentivize activity that benefits society as a whole.⁴ In granting patents, we temporarily remove items from the store of what would otherwise be free to all and reserved to none in the hopes that this will redound to the benefit of society at large.⁵ Thus, patents are not the natural right of an inventor, but rather are rights created by the sovereign in the United States for limited societal purposes.⁶The federal government itself recently explored this concept in arguments before the Federal Circuit—the appeals court that hears cases related to patents—in Astornet Technologies Inc. v. BAE Systems, Inc. In Astornet, the patent holder claimed that three government contractors had violated its patent with their equipment to authenticate boarding passes at airports.⁷ The court dismissed the claims under 28 U.S.C. §1498, which stipulates that when the government uses a patented invention, any patent infringement action must be taken against the United States and not the individuals of companies with whom it contracts.⁸The government''s amicus curiae noted that the US does not ‘infringe’ when it uses a patented invention without authorization, and commentators have pointed out that according to this characterization, one must never think of the US as an ‘infringer,’ but rather as a sovereign that has simply chosen to offer compensation.⁹ According to the brief, the court cannot interpret the U.S. government''s actions as patent infringement. Rather, 28 U.S.C. §1498 stipulates that the only remedy for damages caused by the government''s use of a patent is just compensation after a complaint has been raised in the U.S. Court of Federal Claims. In other words, the government can always use a patent without permission, as long as it provides compensation at a later date if and only if a court rules in favor of a complaint raised by a patent grantee. Therefore, the government may force compulsory licensing and is never actually a patent infringer. This is not to say that the patent grantee has no remedy against the government. Rather, 28 U.S.C. §1498 waives sovereign immunity and establishes the process by which an inventor can claim royalties. At the end of the day, however, the government''s brief reminds us that patents are not granted for inventors to aggrandize their wealth but rather in the interest of society as represented by the sovereign.Bayh-Dole, of course, is a manifestation of this principle. Having entrusted universities with public funds for research, the sovereign then gives universities the right to patent and license the fruits of that research. The intent is not to further fill the university''s coffers with more money but to fill society''s coffers with new products. In other words, under Bayh-Dole, universities are given control over the licensing system specifically to foster the creation of new commercial products for the benefit of society. NPEs, however, muddy the waters.NPEs are individuals or businesses whose core activity involves licensing or litigating patents, rather than making products. NPEs make no products of their own but generate a return by asserting patents against companies that make products.¹⁰ Over the last few years, at least half of all the patent infringement suits filed in the United States have been filed by NPEs.¹¹ Often referred to as patent trolls, many scholars and commentators have argued that NPEs simply create a tax on production—the production of companies already making products. Although one could conceivably argue that they play some role in the innovation system,¹² whatever role they play, NPEs certainly do not make new products. They also do not appear to connect inventors with others who make new products out of their inventions.¹³Traditionally, universities have avoided engaging in widespread patent litigation. For example, a study of 15,000 patent lawsuits filed across four years in the United States found that NPEs filed a majority of those suits.¹⁴ Universities accounted for only one half of one percent of all first-named plaintiffs, making them almost invisible in the dataset.¹⁵Universities have also traditionally avoided partnering with NPEs. In fact, the Association of University Technology Managers (AUTM) released a public interest statement on ethical technology transfer principles in 2007, which universities could sign. The statement is advisory, not mandatory—setting out guidelines for best practices, rather than requirements. For those universities that signed the statement, the code specified that universities should not operate under a business model that is predicated on infringement litigation rather than commercialization to create products. AUTM, which includes some members who are already licensing technology to NPEs, has decided to reexamine the code.¹⁶ Even if AUTM upholds its original statement, however, it is possible that universities increasingly will license technology to the highest bidder, regardless of whether any new commercial products will result.Money is tempting, and the lure for universities to monetize their patents is becoming irresistible. For example, Intellectual Ventures, one of the largest patent holding companies in the United States and a notorious NPE, claims that it has handled patent licensing for 60 American universities but acknowledges that only two of which (Duke and Caltech) have led to commercial products.¹⁷ Notably, both Duke and Caltech had signed the 2007 AUTM Statement opposing transferring patents to NPEs.¹⁸ In addition, press reports have identified examples of patents funded by federal programs that have been transferred to NPEs.¹⁹ Faced with the incentive to profit from research, at least some universities appear to be shifting away from the policy of avoiding NPEs. As the practice spreads, there is a significant risk that more and more universities will be rushing into the waiting arms of NPEs. In this case, universities may end up fueling the type of litigation that hindered Alzheimer''s researchers, as chronicled in ‘The Mouse that Trolled’.Moreover, these new university commercialization methods may have particularly serious consequences for the life science industry. Many people wrongly believe that biotechnology and the pharmaceutical industry are immune to NPE litigation. However, a study of the patent holdings in the fiscal year 2011 of five universities (the University of California system, MIT, the University of Texas system, Caltech, and the University of South Florida) identified numerous patents that could be deployed with the same techniques that patent trolls have used in the technology sector. These included patents on active ingredients of existing drugs, methods of treatment, screening methods to identify new drugs, manufacturing methods, dosage forms, as well as related technologies.²⁰If universities continue to move toward interactions with NPEs, such portfolios will provide tempting morsels to feed the patent trolling appetite, and could help drive patent trolling more toward the life sciences, a result that cannot be good for life science innovation. It would be troubling if taxpayer money that flows to universities ends up fueling patent trolling, rather than encouraging the creation of new products. In that case, the implicit agreement between the public and the research it funds would be disrupted.‘The Mouse that Trolled: The Long and Tortuous History of A Gene Mutation Patent That Became an Expensive Impediment to Alzheimer''s Research’ tells the cautionary tale of the ways in which NPEs, through patent assertion, hinder progress that affects the public. It is clear, however, that there will be similar examples in the future. The authors’ tale not only casts doubt on the NPE model; it should also make us think deeply about the role that the public expects universities to play in society. The public interest requires that universities act responsibly with public funding and remain dedicated to society''s benefit. University patent monetization via NPEs both fails the spirit of Bayh-Dole and damages the public''s trust.     

人工智能时代的专利法:问题、挑战与应对

人工智能作为当前最为尖端的科技成果,对于专利法的挑战是全方面的,既包括人工智能技术本体的专利法律保护、人工智能发明成果的专利法律规制,还涉及人工智能应用工具的专利法律影响问题。造成上述难题的原因包括人工智能的复合性技术结构、人工智能法律客体的本质属性以及人工智能的超强运算能力等人工智能基本特质。为此,应通过优化人工智能技术本身的专利保护模式、开展人工智能自主发明的专利法律规制、创设人工智能应用工具的专利实践指引等措施,实现对人工智能时代专利法律问题的有效应对。     

质疑实用新型与发明专利的“衔接式”保护

现行的《专利审查指南》赋予同一申请人就相同的发明创造享有实用新型专利和发明专利的“衔接式”保护。这种“衔接式”保护不仅违反了禁止重复授权原则,而且造成了专利申请量的虚高和专利审查程序的复杂化,加重了专利局的审查工作负担,延长了同一发明创造的保护期。因此,必须废除《专利审查指南》所创设的“衔接式”保护机制。     

Profit Neutrality in Licensing: The Boundary Between Antitrust Law and Patent Law

We address the patent/antitrust conflict in licensing and developthree guiding principles for deciding acceptable terms of license.Profit neutrality holds that patent rewards should not dependon the rightholder’s ability to work the patent himself.Derived reward holds that the patentholder’s profits shouldbe earned, if at all, from the social value created by the invention.Minimalism holds that licenses should not be more restrictivethan necessary to achieve neutrality. We argue that these principlesare economically sound and rationalize some key decisions ofthe twentieth century such as General Electric and Line Material.     

The wheels on the train go round and round ...

Granted patents prohibit any third party who lacks the patentholder's consent from making or from putting on the market orusing a product which is the subject matter of the patent. Moreover,the German Patent Act also prohibits indirect use of the invention.     

UK court considers the industrial application of biotech patent claims

Speculative uses for a protein are not sufficient to fulfilthe requirement for industrial application since a patent isnot a ‘hunting licence’ to find a use for an invention.     

发明与发明人的义务

美国产品责任法发展的历史呈现出波浪一样的起伏状态。发明人有特别义务去跟踪其所发明的产品的效果、优势与劣势,医疗产品和药物的生产者尤其应该如此;同时应当告知消费者及病患风险与效用,使之能够在知情同意的基础上作出选择。     

假冒专利罪疑难问题探讨

假冒专利罪保护的法益是超个人法益,因此,假冒并不存在的他人的专利,以及未获专利却谎称已获专利的行为,构成假冒专利罪;非法实施他人专利的专利侵权行为,从应然的角度讲,应纳入刑法规制的范畴,但从现行立法规定来看,无法以假冒专利罪定罪处罚;在生产、销售的伪劣商品上假冒专利,或者还假冒他人注册商标的,均应数罪并罚;专利权的刑法保护以选择集中型和散在型相结合的立法模式为宜。