Jane Glover Barrister – Mediator – Adjudicator

SEEING VEINS

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To my horror, I seem to have spent quite a lot of time recently reading about and thinking about the philosophy of IP law. A year ago, I would have rolled my eyes and edged away from anyone who said something at once so pompous and so dull.

At heart, I am a realist, a pragmatist. I’m primarily interested in knowing things that will help my clients win. Until recently, I took a ruthlessly utilitarian approach to assessing IP rights. Is this particular right going to provide a net gain to society as a whole? If yes, it is good and justified. If no, it is bad and unjustified.

But now, I find that when I read judgments or think about IP policy debates or look at legislation I can’t help seeing it in quite a different way. It’s interesting to see where the Courts double down on the utilitarian model and where they rely on other justifications for IP protection – typically, Lockean ideas of traders reaping what they sow (and no more), and Kantian ideas about creative works being an expression of their creator’s free will.

An anaesthetist colleague of mine said that everywhere she goes, she looks at people’s veins. It is the same kind of effect, I think. Once you start looking at things through a certain lens, it is hard to stop.

PROMINENT VEINS: MYRIAD GENETICS

The philosophical girders underpinning IP law are often easiest to spot in higher court decisions that deal with big policy issues. Because it is their job to break fresh ground, judges in those cases can be overt about what they are doing and why they are doing it.

Take, for example, the US Supreme Court decision in Myriad Genetics. As you may recall, this case involved controversial patents relating to the BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of breast and ovarian cancer. The US Supreme Court held unanimously that a naturally occurring DNA segment is a product of nature and is not patentable merely because it has been isolated. The Court accepted, however, that cDNA is patentable because it is created in the laboratory, and does not occur naturally. As outlined below, the Court explicitly rejected the “reap what you sow” approach (which is more common in analyses of copyright law than in patent cases in any event) and doubled down on the utilitarian/consequentialist approach that is typical of justifications of patent law.

REAP WHAT YOU SOW APPROACH REJECTED

Much of IP law is based on the idea of just deserts: as you sow, so shall you reap. For Locke, this concept justified property rights as a whole (although he doesn’t mention IP specifically, mostly just acorns and things). Famously, Locke said:

Whatsoever, then, he removes out of the State that Nature hath provided, and left it in, he hath mixed his Labour with it, and joyned to it something that is his own, and thereby makes it his Property.

Book II, Second Treatise of Government

It is indisputable that discovering the precise location and sequence of the BRCA1 and BRCA2 genes involved extensive labour and investment. BRCA1 is located on chromosone 17, which has around 80 million nucleotides, and BRCA2 is located on chromosone 13, which has around 114 million nucleotides. The BRCA1 and BRCA2 genes are each about 80,000 nucleotides long. The work involved was immense.

The Court completely rejected the suggestion that this labour and investment was a sufficient basis on which to ground a property right, however. It said that groundbreaking, innovative or even brilliant discovery does not by itself satisfy the test for patentability. Extensive effort alone is insufficient.

CONSEQUENTIALIST APPROACH ENDORSED

Every patent law student learns the standard origin myth of patents, referred to as the “patent bargain”.  The patent bargain is a metaphorical contract between the inventor and the State.  In return for sharing full details of the invention with the public, the inventor is granted a time-limited statutory monopoly to work the invention.  After the expiry of the patent, the invention can be made and used by anyone.

One fascinating aspect of the Myriad Genetics case is that not only did the Court endorse the patent bargain, it was plainly prepared to re-open and tweak the patent bargain if necessary in light of its real world consequences. The Court noted that patent protection strikes a delicate balance between creating incentives that lead to creation, invention, and discovery, and impeding the flow of information that might permit, indeed spur, invention.

During the hearing, Justice Kennedy was the most explicit about the fact that the Court was re-assessing the boundaries of the patent bargain in terms of its real-world implications, asking counsel as follows:

‘But I – –  I just don’t think we can decide the case on the ground, oh, don’t worry about the investment, it’ll come,  I – – I just don’t think we can do that.’

“If we were to accept…that the DNA is not patentable but the cDNA is, would that give the industry sufficient protection for innovation and research? And if not, why not?”

His Honour was clearly concerned to ensure that his decision had the effect of ensuring that any reworked patent bargain still provided the appropriate incentives.

THE UPSHOT

Now, you might be thinking that all of this is pretty meaningless for day-to-day practice and that there is no point dredging it all up. But actually, I think it is important. Certainly for judges and policy makers and academics, having regard to the underlying principles and justifications for IP law is an important part of their jobs. And litigators always appeal to judges’ intuitions about fairness, so it can really help to know why something feels fair or not.

Also, for lobbyists or others who perennially disagree about the scope of IP rights, it can be useful to understand how different justifications for IP lead to competing beliefs about how the law should operate. For example, those with a strong Kantian bent are likely to be very passionate about the rights of creators, especially on things like moral rights, because they see creations and creators as closely linked. They are likely to consider that it is right and just that creators have a fair opportunity to make a decent living out of their contributions. On the other hand, someone who takes more of a law and economics, or a utilitarian approach, may come to quite a different conclusion.

I’m finding it a bit weird thinking about all this stuff on my own. Perhaps I’ll discover that actually there have been underground IP philosophy parties going on all over the place, and I just didn’t know about them? Send me your secret handshakes, please!

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Jane Glover

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By Jane Glover
Jane Glover Barrister – Mediator – Adjudicator

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