Chief Judge Rader's Contribution to Comparative Patent Law

• Citation: Vol. 7 No. 4
• Publication year: 2012

Washington Journal of Law, Technology and Arts Volume 7, Issue 4 Spring 2012

Chief Judge Rader's Contribution to Comparative Patent Law

Toshiko Takenaka (fn*) © Toshiko Takenaka

Abstract

Chief Judge Rader influences patent jurisprudence in other nations through his interaction with judges and lawyers from these jurisdictions. He also uses the comparative method to gain insights from experiences in these jurisdictions to improve U.S. patent jurisprudence. This Article discusses opinions authored by Chief Judge Rader from the comparative law perspective. It discusses his influence on European and Japanese patent jurisprudence in the three areas: the (I) patent eligibility, (II) nonobviousness, and (III) enablement-written description requirements. Judge Rader likewise used his knowledge of foreign jurisprudence to interpret U.S. patent statutes and to develop doctrines in these areas.

Table of Contents

Introduction .............................................................................. 380

I. Patent Eligibility ................................................................ 381

A.The United States .......................................................... 381

B.Japan ............................................................................. 383

II. Obviousness ....................................................................... 385

A.The United States .......................................................... 385

B.Japan ............................................................................. 391

III. Enablement and Written Description Requirement ............. 395

A.The United States .......................................................... 395

B.Europe ........................................................................... 397

C.Japan ............................................................................. 401

Conclusion ................................................................................ 403

Introduction

This author met Chief Judge Randall Rader for the first time at the Association of American Law School (AALS) annual meeting in Washington, D.C. in 1997. Since then, the judge has been a great mentor and inspiration for academic research and writing. He invited me to spend time in his chambers and work with his fulltime law clerks on cases assigned to him. The experience working with him gave invaluable insights into reading opinions and analyzing U.S. case law. Judge Rader has given similar opportunities not only to U.S. law students, but also to European and Japanese lawyers who attended the LL.M. programs in which he teaches as an adjunct professor. He is a frequent speaker for patent-related seminars and conferences and engages in debates with European and Japanese judges on issues that parties present in patent infringement litigation filed in their courts. Just as he is one of the most influential persons in my academic career, he has made a substantial impact on the development of professional and academic careers for key people in the European and Japanese IP community.

Such influences appear in European and Japanese case law through opinions and briefs authored by judges and lawyers who are familiar with U.S. patent jurisprudence. Although courts in civil law countries, such as Japanese courts, do not have a tradition of citing cases, particularly cases from foreign jurisdictions, European and Japanese judges are open to a well-reasoned argument regardless of the source. Judges who are exposed to U.S. ideas through work with Chief Judge Rader or his presentations may readily find merit in arguments in briefs prepared by U.S.-trained lawyers. Such an influence is confirmed by similarity in discussions and reasoning on important patentability and infringement issues between opinions authored by European and Japanese judges and by Chief Judge Rader.

Chief Judge Rader's knowledge on patent jurisprudence in foreign countries also brings great benefit to the U.S. patent community. He uses the comparative law method for analyzing issues presented to his courts and highlights various features of the U.S. patent system that contrast with foreign patent systems, helping U.S. legal professionals develop an in-depth understanding of patent policies underlying the parties' disputes from the global perspective. His openness to ideas from foreign countries and his effort to develop the best practices for enhancing patent policies naturally have brought some aspects of U.S. patent system more in line with the rest of the world.

This Article discusses opinions authored by Chief Judge Rader from the comparative law perspective. It compares his opinions with opinions authored by European and Japanese judges and discusses his influence in European and Japanese patent jurisprudence and vice versa. This Article focuses on three areas- the (I) patent eligibility, (II) nonobviousness, and (III) enablement/written description requirements-in which Judge Rader used his knowledge on foreign jurisprudence to interpret the U.S. patent statute and to develop doctrines. This Article also reviews opinions authored by European and Japanese judges with respect to Judge Rader's work in these three areas to discuss his contribution to comparative patent law.

I. Patent Eligibility

A. The United States

An important issue in patent law is whether an invention fits within the subject matter that is eligible for a patent. The U.S. patent system benefits from Chief Judge Rader's broad knowledge of foreign patent systems when it comes to assessing patent eligibility. It is very rare for U.S. courts, at least in patent cases, to take account of statutes and jurisprudence of foreign countries. Chief Judge Rader changed this tradition and used comparative law to support his views. In In re Bilski,(fn1) Chief Judge Rader emphasized the broad scope of patent eligible subject matter under the U.S. Patent Act in comparison to that of the European Patent Convention.Unlike the laws of other nations that include broad exclusions to eligible subject matter, such as European restrictions on software and other method patents . . . and prohibitions against patents deemed contrary to the public morality . . . U.S. law and policy have embraced advances without regard to their subject matter.(fn2)

Chief Judge Rader believes that this broad patent eligibility gives the U.S. patent system enough flexibility to embrace unknown fields of inventions and to guarantee incentives for new innovations, which leads the U.S. to be a top innovation-driven country in global competition. To maintain this broad eligibility, he urges limiting exclusions from patent eligibility to three items expressly endorsed by the Supreme Court: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas.(fn3) Nevertheless, he concluded that the claims at issue in Bilski should be rejected for lack of eligibility simply because they were directed to an abstract idea.(fn4) He explained that the reason why an abstract idea is excluded from patent eligibility is to adhere to the constitutional goal of the patent system: "[T]he [Patent] Act intends, as section 101 explains, to provide 'useful' technology"; thus, "[a]n abstract idea must be applied to (transformed into) a practical use before it qualifies for protection."(fn5)

Inspired by Judge Rader, Judge Haldane Robert Mayer also used comparative law to support his view by citing the definition of statutory invention under the Japanese Patent Act (JPA) and the Patent Act of the Republic of Korea in his dissenting opinion.(fn6) Relying on the U.S. Supreme Court's definition of eligibility, "the application of the law of nature to a new and useful end,"(fn7) he argued that the scope of patent eligibility should include only technological subject matter because "applying laws of nature to new and useful ends is nothing other than 'technology'" as these foreign patent acts define patent eligible inventions. As a result, he concluded that business methods should be excluded from patent eligibility.

B. Japan

Contrary to Judge Mayer's restrictive interpretation of patent eligibility, the definition of invention under the JPA does not categorically exclude business methods. The JPA defines a statutory invention as the highly advanced creation of technical ideas that utilize a law of nature.(fn8) The statute requires a highly advanced level of creation because of the need to distinguish the subject matter of the patent from that of the utility model, which is a type of petite patent that requires only a low level of nonobviousness or inventive step.(fn9)

The key to distinguishing patent-eligible subject matter from ineligible subject matter under JPA is the utilization or application of a law of nature. Some Japanese judges interpret "laws of nature" broadly in the same manner as Chief Judge Rader interprets "an abstract idea" to include any law or principle that can be applied to a practical use. They may find a statutory invention with respect to a business method as long as the method provides a concrete and useful result regardless of the nature of the practical use.

Such a broad interpretation is highlighted in the phoneme index dictionary case. Reviewing an appeal from the Japan Patent Office (JPO), Japan's IP High Court found statutory invention with respect to a claim for a method of finding words in a bilingual...