后Bilski时代电子商务商业方法专利之因应与挑战

美国法院早期以商业方法属于数学演绎方法为由,将商业方法排除在专利保护之外.受此影响,商业方法在美国一直被认为不应授予专利.后来法院提出如果抽象的商业方法与运用这种方法后发生了某种物理转换或者有形的装置相联系,则应承认其具有可专利性.1998年更是表明只要该项发明能导出“实用、具体、有形之结果”者,仍不失其可专利性,否认了商业方法在美国《专利法》中存在例外.虽然联邦巡回上诉法院在In re Bilski案中,提出美国《专利法》第101条规定的方法发明须符合“机器或转换测试法”,试图限缩商业方法专利的范围,但联邦最高法院在 Bilski v.Kappos案中否认其为审查商业方法专利唯一的判断标准.在迄今为止仍存较大争议的背景下,如果既无技术贡献,亦无技术特征,更未与其实现所必须的计算机设备或计算程序相结合,而仅系解决商业经营的程序、步骤或者流程者,商业方法即应为人类智力活动的规则或方法,属于思想的范畴,而不属于专利权的保护客体.     

Claim construction and the doctrine of equivalents in Amgen v Transkaryotic Therapies, Inc

The US Court of Appeals for the Federal Circuit has affirmeda District Court decision that Transkaryotic Therapies Inc andAventis Pharmaceuticals Inc infringed Amgen's erythropoietin(EPO) patents; this decision upheld the validity of two of Amgen'sEPO patents and the infringement by Transkaryotic of three patents,including a patent that does not expire until 2015.     

EPO decision on exclusion of methods of business research from patentability, requirement of technical character of an invention

This case concerns the exclusion of business research methodsfrom patentability and the fact that, even though claims canconsist of a mixture of technical and non-technical features,novelty and inventive step can only be based on technical features.     

Computer-related inventions: from CFPH to Macrossan

Legal context: The recent joint decision of the Court of Appeal in AerotelLtd v Telco Holdings Ltd and othersand Patent Application byNeal William Macrossan concerns the proper application of theexclusions to patentability under Article 52 of the EuropeanPatent Convention (EPC) and in particular the exclusions concerningcomputer implemented inventions and methods of doing business. Key points: Before this decision, the proper approach to this area of thelaw had been thoroughly discussed and reformulated by DeputyJudge Prescott QC in CFPH followed by a string of first instancecases. There were also numerous decisions of the European PatentOffice, not all of which were consistent. Accordingly, thisis an area fraught with difficulty where it has been difficultto find an overreaching rationale to exclusions based on individualpolicy. The Court of Appeal has now set a new four stage test by whichcomputer implemented inventions should be approached, as wellas patents to which the other exclusions might apply. Practical significance: This new test may not reduce the difficulty of assessing inventionson a case by case basis, but it provides one source of authoritythat can now be followed. Furthermore, it may also prove helpfulthat each of the cases featured in this decision falls on eitherside of Article 52. As such the decision provides a useful,if sketchy, illustration of the dividing line between patentableand non-patentable subject matter.     

The Supreme Court's spring term: abortion, the right to die, and the decline of privacy rights

Wing analyzes the constitutional significance and the important long-term implications for health policy of three 1990 U.S. Supreme Court decisions: Hodgson v. Minnesota, Ohio v. Akron Center for Reproductive Health, and Cruzan v. Director, Missouri Department of Health. Hodgson and Ohio upheld state statutes requiring parental notification of a minor's impending abortion. Cruzan upheld a state court decision refusing to allow the family of a patient in a persistent vegetative state to discontinue life-sustaining treatment. Wing argues that these decisions reach far beyond "the abortion issue" or "the right to die." Not only have they narrowed the constitutional protection of individual privacy, but they allow states to regulate activities like abortion in a manner that indicates that the Court is prepared to repeal the notion that individual privacy is entitled to enhanced judicial protection.     

Parenthood,Childhood and Injury: Some Dilemmas for the Law of Torts

This paper looks at some recent developments in the law of torts. It looks in particular at the emergence of civil claims with respect to child abuse and the confinements effected by traditional limitation periods in relation to those claims. It examines in particular in the first section the House of Lords decision in Stubbings v. Webb to the effect that civil claims over child sex abuse were time barred, and the subsequent unsuccessful appeal to the European Court of Human Rights which ruled by seven votes to two that there had been no violation of articles 6 of the European Convention on Human Rights. It is also noted that the Court ruled unanimously that there had been no violation of article 8; and by eight votes to one that there had been no violation of article 14. The paper turns in the second section to what have been called actions for wrongful birth, arguing that here we see the law of torts taking a more protective role, one which must be set side by side with the child abuse actions examined in the first part of the paper. Throughout the paper, both English and Australian law is canvassed. The major claims in this paper relate to what the author terms a singularly adult picture or rights and wrongs reflected in the law of torts.     

Motive Unmasked: The European Court of Justice, the Free Movement of Goods, and the Search for Legitimacy

Abstract: In exempting from scrutiny under Article 30 EC certain measures constituting 'selling arrangements', the author examines whether the European Court of Justice in Keck and Mithouard and its progeny sought more than mere clarification of its jurisprudence on the free movement of goods. To wit, he claims that the Court was motivated by a sense of waning faith in its institutional legitimacy, initiating in Keck an attempt to more vigorously police the Community-Member State jurisdictional divide in favour of Member State prerogatives, banishing the Community judicial and legislative branches from the realm of 'selling arrangements'. After critical assessment of this hypothesis and of the Court's success, a final section queries whether the ECJ has adopted similar strategies in the Competition law and services realms.     

Patents impediment or expedient to technology transfer

This paper examines the role that patents play in transferring technology. The history of our patent system and the requirements for patentability are reviewed. The option of keeping an invention as a trade secret rather than applying for a patent is presented. The paper also discusses the rationale behind the government’s change in its policy which permits exclusive licensing of public-owned patents. The author concludes that patents are not a barrier but a significant help in promoting technology transfer.     

Grant v Commissioner of Patents and patenting knowledge inventions

This article reviews the Full Federal Court decision in Grant v Commissioner of Patents (2006) 154 FCR 62; 69 IPR 221; [2006] FCAFC 120 denying patentability to a method for structuring a financial transaction so as to protect an individual's assets from a loss of ownership as a result of a legal liability. The article challenges the distinctions drawn by the Full Federal Court and argues that the decision marks a new development in setting a boundary for the Patents Act 1990 (Cth) "manner of manufacture". The article concludese that important questions now arise in assessing the possible application of the Patents Act 1990 (Cth) to promoting some inventions (and innovations) and not others, and whether there are other classes of inventions that also do not require the Patents Act 1990 (Cth) incentives.     

Software Patents - Boon or Bane for Europe?

Software patents have been making the headlines recently. Inthe EU, after the European Parliament has rejected a controversialproposed ‘Directive on the patentability of computer-implementedinventions’ in July 2005, the debate is far from over:The Commission continues to pursue policies expanding the reachof intellectual property rights, while the controversies haveexposed issues that call for a more cautious approach, demandingjustification for further extension of IP – difficultto provide in general, and probably impossible with respectto computer software, as the evolution of information technologyreveals fundamental incompatibilities with the patent system:Thorough analysis of the historical development of IP as wellas that of computers and their programs, both as a science andwith its economic implications as an industry, combined withthe international comparison of experiences with (and alternativesto) patents covering software, provide convincing reasons tokeep patent law within its established confines supported bythe European Patent Convention, separating patentable subjectmatter from unpatentable mental acts, business methods and mathematics.     

Courts Uphold Denials of Coverage Even in the Absence of Mold,Lead, and Asbestos Exclusions

Courts have upheld insurers’ disclaimers on mold, lead, and asbestos claims under comprehensive general liability (CGL) policies, evidencing the importance of maintaining affirmative cover in the emerging environmental insurance marketplace. Removing a CGL mold, lead, or asbestos exclusion is helpful, but insurers may assert a coverage defense and not pay a claim for reasons that have included: failure to meet the burden of proof, failure to trigger coverage, an absolute pollution exclusion, a preexisting condition exclusion, a defective design exclusion, a faulty workmanship exclusion, a business risk exclusion, a known loss or loss in progress, a custody and control exclusion, an owned property exclusion, and late notice. Accordingly, affirmative coverage grants contained in environmental insurance policies are necessary to protect against such losses and maximize recoveries.     

Canadian Supreme Court upholds,but limits,AZT patent

On 5 December 2002, the Supreme Court of Canada ended a long-running dispute when it unanimously upheld the validity of the Canadian patent on the antiretroviral drug zidovudine (AZT) held by Glaxo Wellcome (now GlaxoSmithKline).     

Patenting human beings: do sub-human creatures deserve constitutional protection?

The availability of patents for genetically altered animals raises questions about the patentability of human beings. Genetic research will produce beings who fall halfway between what we currently think of as "animal" and "human." It is unclear on which side of the legal line these creatures will fall. In April 1988, Congress revised the Patent Act with a statement that human beings are not to be considered patentable subject matter. Congress, however, failed to supply a definition of the term "human being." A definition will clarify the legal status of sub-human creatures. The author addresses this problem and proposes a definition of "human being" as an amendment to the Patent Act.     

New Battles and Battlegrounds for Mandatory Arbitration After Epic Systems,New Prime,and Lamps Plus

The Supreme Court's recent decisions interpreting the Federal Arbitration Act (FAA) in the employment context generally prioritize arbitration over workers’ labor law rights. The majority in Epic Systems Corporation v. Lewis upheld mandatory individual employment arbitration agreements despite their conflict with the labor law right to act in concert. The same majority in Lamps Plus, Inc. v. Varela rejected a state law interpretation of a contract provision to find that parties to an employment contract intend individual arbitration absent reference to group arbitration. A unanimous Court in New Prime v. Oliveira interpreted the FAA to include independent contractors under the transportation worker exemption, reinvigorating the battle over what it means to be engaged in interstate commerce to qualify for the exemption. These decisions resolved some disputes about the breadth of the FAA, but other questions remain. In the wake of Epic Systems and Lamps Plus, state courts and legislatures are testing the boundaries of the FAA's saving clause, with limited success. Confidentiality provisions, frequently associated with arbitration agreements, may unlawfully interfere with employees’ federal labor law rights. This article recommends that Congress amend the FAA to address these issues by excluding all workers engaged in interstate commerce, not just transportation workers, because the Court has strayed far from the original intent of the Act—to enforce commercial agreements in which the parties had equal bargaining power. State legislation also should provide guidance on what makes arbitration voluntary and fair, and provide a choice to employees on collective action, forum, and confidentiality.     

LabCorp v. Metabolite Laboratories: The Supreme Court listens, but declines to speak.

In the United States, a longstanding legal rule exists against patenting natural phenomena. The Supreme Court recently had an opportunity to help define the boundaries and clarify the implications of this "natural phenomenon doctrine" in Laboratory Corporation of America v. Metabolite Labs., dismissed as improvidently granted. This article argues that the natural phenomenon doctrine renders both the patent claim at issue in LabCorp, and the patents that directly or indirectly claim biological correlations between genotypes and medical phenotypes, invalid or unenforceable under U.S. patent law.     

Grant's Application: it's time for a new approach to a "public interest" exclusion from patentability

This article reviews the recent IP Australia decision in Grant's Application [2004] APO 11 about an innovation patent for a way of protecting assets against a loss of ownership as a result of a legal liability. The significance of this decision was to expose the tortured reasoning necessary to exclude from patentability an invention that was arguably contrary to the "public interest". The article asserts that the effect of the decision revoking the patent was correct, but that the reasoning points to a need to reconsider the "public interest" limits on patentability. The article then considers the approach that should be adopted in formalising a "public interest" exemption from patentability that is practical and generally applicable.     

Optical system restraining aberrations and exclusions from patent protection

The patent application concerned a method for designing an opticalsystem that satisfied a predetermined condition set out in amathematical equation. Did such a method fall into one of theexclusions from patentability listed in Art 52(2) EPC and didthe claims have a ‘technical character’?     

Abandoning the common law: medical negligence, genetic tests and wrongful life in the Australian High Court

The Australian High Court recently found that the common law could allow parents to claim tortious damages when medical negligence was proven to have led to the birth of an unplanned, but healthy, baby (Cattanach v Melchior (2003) 215 CLR 1). In Harriton v Stephens (2006) 80 ALJR 791; [2006] HCA 15 and Waller v James; Waller v Hoolahan (2006) 80 ALJR 846; [2006] HCA 16 the High Court in a six-to-one decision (Kirby J dissenting) decided that no such claim could be made by a child when medical negligence in failing to order an in utero genetic test caused the child severe disability. In an era when almost all pregnancies will soon require patented fetal genetic tests as part of the professional standard of care, the High Court, by barring so-called "wrongful life" (better termed "wrongful suffering") claims, may have created a partial immunity from suit for their corporate manufacturers and the doctors who administer them. What lessons can be learnt from this case about how the Australian High Court is, or should be, approaching medical negligence cases and its role as guardian of the Australian common law?     

Spanish Supreme Court provides limited relief for data controllers

Earlier this year the Spanish Supreme Court gave judgment on an application to annul the data protection regulations set out in Royal Decree 1720/2007 and to refer the Spanish implementation of the Data Protection Directive to the European Court of Justice. The application was partially successful. Some sections of the Royal Decree have been annulled but much of it was upheld. The Supreme Court also referred the Spanish implementation of the legitimate interests processing condition (art. 7(f) of the Data Protection Directive) to the European Court of Justice. The European Court of Justice’s decision could have a material impact on data controllers in Spain. If the legitimate interest condition is finally recognised it should make data protection compliance significantly easier.     

Precedent, Parity, and Racial Discrimination: A Federal/State Comparison of the Impact of Brown v. Board of Education

Questions regarding Brown v. Board of Education 's short-term effect remain unanswered, particularly its comparative impact on federal district courts and state supreme courts. We test this through an analysis of racial discrimination cases in those venues in the twenty-year period bifurcated by the decision in May 1954. Our findings suggest that while federal district courts and state courts were similarly unresponsive to discrimination claims before that date, Brown exerted a significant impact on district court decisions but had little influence at the state level. Furthermore, a third pattern was found in federal appellate courts, where discrimination claims had a high likelihood of pro-minority decisions even before the Supreme Court directive.