The new invention creation activity boundary in patent law.

• Author: Bagley, Margo A.
• Position: Boundaries of Intellectual Property Symposium

ABSTRACT

This Essay identifies a new boundary in patent law--illegal or immoral invention creation activity--and explores the possible challenges and opportunities it may facilitate. The boundary currently is neither robust nor extensive, and whether and under what circumstances it should exist at all is open to debate.

INTRODUCTION

Set in eighteenth-century France, author Patrick Suskind's novel Perfume tells the story of Jean-Baptiste Grenouille, a man who, from birth, had no personal body odor, which had the effect of alienating him from others. (1) Lacking a personal scent but having an unusually refined sense of smell, Grenouille, an inventor, became obsessed with developing the perfect perfume that would cause people to adore him. He succeeded in his quest. Unfortunately, his method of creating this compound was to murder young women and extract fragrance compounds from their bodies.

Fast-forward to the twenty-first century and imagine that Grenouille seeks a patent on his useful, novel, and nonobvious composition of matter. Should the fact that he murdered people in order to create the invention have any impact on his ability to obtain a patent or on the enforceability of any patent he does obtain?

Although this is a hypothetical question, an increasing number of countries are considering, in patentability determinations, past "bad" activities in creating inventive subject matter. Such inquiries traditionally have been irrelevant to an invention's ultimate patentability or to patent enforceability, but times are changing. This Essay, written in conjunction with a conference on boundaries in intellectual property law, identifies what is shaping up to be a new boundary in patent law: invention creation activity. (2)

As in real property determinations, patent law contains numerous boundaries, or limits, delineating the criteria for obtaining patent protection and for losing it. Unfortunately, patent law boundaries tend to be difficult to ascertain (3) and are subject to both expansion (4) and contraction. (5)

Whereas patent law boundary locations may change, the boundaries themselves are quite stable. Subject matter, utility, novelty, nonobviousness, and others continue to be the basis for patent limits, and it is rare to see old boundaries eliminated or new boundaries created. (6) Yet it appears that a new boundary--invention creation activity--is being erected in patent law today. (7)

Recently, applicants for patents in places such as the countries of Europe, Japan, Peru, India, and Brazil have begun facing invention creation activity issues in relation to inventions involving human embryonic stem cells (raising morality concerns) and illegally obtained genetic resources. (8) New revisions to China's patent law include invention creation activity provisions as well. (9)

Traditionally, inventor/owner conduct has only been relevant, if at all, in two distinct time periods: (1) after the filing of an application, and (2) before patent issuance. Even then, such conduct is relevant only to patent enforceability, not validity, based on theories derived from the equitable doctrine of unclean hands. (10) For example, in the United States, doctrines such as inequitable conduct and prosecution laches can be asserted to bar enforcement of a patent based on misconduct of the patentee in prosecuting the application; (11) and after a patent issues, the doctrines of patent misuse, equitable estoppel, laches, and more may be invoked to bar enforceability based on patentee misconduct in enforcing the patent. (12)

Pre-filing: Post-Filing: Post-Issuance: Emerging Inequitable conduct Patent Misuse restrictions? Prosecution laches Estoppels The idea of patent offices engaging in a similar inquiry for pre-application filing, invention creation conduct is new, but not completely surprising. (13) It is, perhaps, not a coincidence that inventions involving life forms comprise the current context in which invention creation activity questions are arising and that this is an area where utility patent protection was essentially unavailable thirty years ago, before the landmark Diamond v. Chakrabarty (14) decision. In Chakrabarty, the U.S. Supreme Court ruled that living matter, such as genetically modified bacteria, could qualify for patent protection, opening the floodgates to the patenting of morally controversial biotech inventions ranging from transgenic animals and plants, to genetic DNA sequences and human embryonic stem cell products. (15) Perhaps it was inevitable that expansions in the scope of patent-eligible subject matter would lead, in some countries at least, to a concomitant increase in restrictions on the patenting of such inventions or the enforceability of patents on such inventions.

Part I of this Essay describes the new boundary's appearance in relation to illegal and immoral invention creation activity, as well as its possible future extension to unethical activity such as that at issue in Moore v. Regents of the University of California. (16) Part II discusses potential issues and opportunities that the new boundary raises while also exposing its current fragility. The Essay ultimately concludes that invention creation activity is a new boundary whose contours bear watching and whose continued development, if there is any, should be cautious, incremental, and well-considered.

1. ILLEGAL, IMMORAL, AND UNETHICAL ACTIVITY IN INVENTION CREATION

   Although questions of the illegality or morality of the use of an invention (17) have often come into play throughout history and up to the present time, there appears to be little precedent for considering the acts of invention creation in the determination of either patentability or patent enforceability. (18)

   Until now. Recent legislative actions and judicial decisions in China, Europe, and beyond illustrate the emergence of the new invention creation activity boundary in relation to illegal and immoral conduct.

   1. Illegal: Genetic Resources and Disclosure of Origin

      For several decades, interests in the United States and abroad have been concerned with intellectual property protection in China. Although China has often been criticized for having weak intellectual property laws and lax enforcement of those laws, in recent years the country has increased efforts to protect intellectual property and to encourage domestic entities to pursue the development and protection of intellectual property. (19) One result of this policy change is that the Chinese State Intellectual Property Office (SIPO) has seen an exponential increase in patent applications. (20) Despite having a patent statute since only 1984, China's SIPO has jumped from a position of relative obscurity to number three in the world in the number of utility patent applications received each year, and that number is climbing. (21) On December 27, 2008, China's top legislative body, the National People's Congress Standing Committee, passed the Third Amendment to the Chinese Patent Law, which went into effect October 1, 2009. (22) The Third Amendment includes a provision that would deny patentability to any invention created using genetic resources obtained in violation of Chinese law. The new Article 5 states:

      No patent right shall be granted for any invention-creation that is contrary to the laws of the State or social morality or that is detrimental to the public interest. No patent right shall be granted for any invention-creation which is completed on the basis of genetic resources of which the acquisition or use breaches the stipulations of related laws and regulations. (23) Thus, for the first time under Chinese patent law, the revised draft introduces special measures to make violation of genetic resource acquisition laws in invention creation a basis for denying patentability or invalidating a patent.

      The draft implementing guidelines for the new Act define genetic resources to include genetic material extracted from humans, animals, and plants, such as blood, genes, organs, and skin, if the invention relies on the "genetic functionality" of the material. (24)

      In addition to Article 5, the revised Chinese Patent Act contains another provision related to genetic resource acquisition, Article 26, which states in part:

      An applicant who files a patent application for an invention-creation completed on the basis of genetic resources shall in the patent application document indicate the direct and indirect source of the genetic resources; the applicant unable to indicate the original source of the genetic resource must provide an explanation. (25) Article 26 thus requires applicants to disclose the country of origin of relevant genetic resources in addition to the direct supplier. Failure to supply the required information is a basis for rejecting claims in an application, but apparently not for invalidating an already issued patent. (26)

      These new provisions appear to be designed to address several concerns relating to biopiracy. "Biopiracy" has been defined as "[t]he patenting of plants, genes, and other biological products that are indigenous to a foreign country" without compensating the keepers of those resources and the holders of knowledge appropriated during ethnobiological research processes. (27) Many biodiversity-rich countries, like China, are changing their laws to deny patentability to inventions created with illegally acquired genetic resources. (28) Such countries include members of the Andean Community, Brazil, and India. (29) These countries and others also have been pressing in several multilateral for a for a new Disclosure of Origin (DOO) patentability requirement that would address benefit sharing and prior informed consent. (30) Such efforts are consistent with, and designed to give effect to, the Convention on Biological Diversity (CBD). (31) The CBD established that genetic resources are not the common heritage of mankind, but rather are the property of sovereigns who should...