Berlin slides

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IP law and a theory of technical artifacts

David Koepsell, Delft University of Technology, NL

April 13, 2023 2

Intellectual Property Law

• Nexus of science and technology

• “patents and copyrights approach, nearer than any other class belonging to forensic discussion to what may be called the metaphysics of the law…” - Justice Story, Folsom v. Marsh

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Intellectual Property Law

• Discussions of what counts as a “patentable” object hinge upon concluding whether something is a• New• Non-obvious• Useful• Product (artefact)or process

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Intellectual Property Law

• The European Patent Convention does not provide any positive guidance on what should be considered an invention for the purposes of patent law. However, it provides in Article 52(2) EPC a nonexhaustive list of what are not to be regarded as inventions, and therefore not patentable subject matter:

The following in particular shall not be regarded as inventions within the meaning of paragraph 1:(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.

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Intellectual Property Law

• European Biotechnology Directive 98/44/EC:

• the Directive does allow for the patenting of an invention based on an element isolated from the human body or otherwise produced by means of a technical process, which is industrially applicable, even where the structure of that element is identical to that of the natural element.

• This means that an isolated gene or gene sequence, or other element isolated from an animal or plant, is patentable provided that its function is known and a suitable industrial application is derived from that product. However, no rights are given to that product when found in its natural environment.

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The domains…

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The domains…

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Science vs. Engineering

• These two fields have traditionally been inter-related, but each has a unique domain (though they overlap in method and products)

• Science, at its core, is the search for natural truths, natural laws, and physical phenomena

• Engineering involves the application of these laws to productive ends

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The domains…

Law, natural equivalence

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The domains…

Algorithm, incorporates law into artifact(process or product requiring intention)

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Science vs. Engineering

science

engineering

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Diamond v. Chakrabarthy, 447 U.S. 303 (1980)

• “While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter -- a product of human ingenuity ‘having a distinctive name, character [and] use.’ Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, distinguished. Pp. 447 U. S. 308-310.”

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Science vs. Engineering

Laws of nature,physical phenomena,“abstract ideas”

nonnaturally occurring manufacture or composition of matter -- a product of human ingenuity ‘having a distinctive name, character [and] use

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AMP v. Myriad

Claims include: “The isolated DNA of claim 1, wherein said DNA has the nucleotide sequence set forth in SEQ ID NO:1.”

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How did this happen?The “isolated and purified” anomaly• Parke-Davis v. H.K. Mulfor & Co. In Parke-Davis,

Judge Learned Hand considered whether an isolated and purified form of adrenalin was patentable. The adrenalin, as patented in U.S. Patent No. 753,177, was extracted from suprarenal glands as a salt, and then further purified as a base…

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The problem with “isolated and purified”

Is “isolated and purified”

different from naturally-occurring

QuickTime™ and a decompressor

are needed to see this picture.

?

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The theory

Where the utility of the isolated and purified substance deviated greatly from the substance in its natural form, courts have suggested that the novelty requirement is met. This is both because the purified substance does not simply occur in nature, and the extraordinary or unexpected results that are achieved when the substance is isolated or purified is indicative of patentable invention

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The irrational implication…

• Priestley could have patented O2…

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The irrational implication…

• After all, pure, isolated O2 does not occur in nature, and it is extraordinarily useful*

* Patent attorneys have actually made this argument with me… nevermind photosynthesis

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Can we reconcile law and reality?

Yes, consider Priestley’s oxygen

He invented a means of accumulating pure oxygen, by heating mercuric acid. He did not invent molecular, gaseous oxygen. Arguably, acc. to Chakrabarthy and Bilski, O2 is a “physical phenomenon,” not patent-eligible. So give Priestley a process patent, but not on the product

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Can we reconcile law and reality?

• Consider an engine that runs on gaseous hydrogen and emits the waste product H2O:• Under the current state of affairs -

a) if the engine is intended to produce H2O (as opposed to energy) then the H2O is a patentable artefact

b) But, if the engine is intended to produce energy, then H2O is simply an unpatentable accident

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Can we reconcile law and reality?

• Thus, William Nicholson and Anthony Carlisle’s electrolysis of water in 1800 would not have violated Priestley’s patent and would itself be a patent-eligible process.

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Did Priestley create an artefact?

• The question boils down to: is purified O2 an artefact just because it was intentionally produced, or is there more?

Let’s examine the ontology of IP:

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The Ontology of IP-types and tokens

• Artifacts are a specific type of token, one that comes into being through human intention. Every non-artefactual token is either natural or an accident. Natural tokens owe their genesis to non-teleological causes.

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The Ontology of IP-types and tokens

• Accidents are byproducts of intention, and not the goal of intentional action. Their existence is dependent upon intention, but not the responsibility of the creator

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The Ontology of IP-types and tokens

• Expressions are intended extensions of ideas into the universe. Ideas are non-corporeal, they are ontologically prior to intentions, and all expressions express some idea. Pi is an idea, but a circle is an expression.

• Ideas are distinct from thoughts, which are the instantiation of ideas in minds. The type/token distinction is embodied in the idea/expression dichotomy, but the subjects of these do not fully coincide. Not all tokens are susceptible to IP protection because not all tokens are expressions, clearly.

• But which expressions ought to be eligible for IP protection, and why?

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The Ontology of IP-types and tokens

• Although the law correctly characterizes natural laws (which are natural types) and natural phenomena (which are natural tokens) as beyond the scope of IP, the third category, "abstract ideas" is both over and under-inclusive.

• It is over-inclusive because all ideas are necessarily abstract. It is under-inclusive because, in its application, algorithms have been precluded from IP protection

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The Ontology of IP-types and tokens

• Naturally occurring objects are clearly not artifacts. The question remains as to how to classify man made objects that are identical morphologically, although not genetically, to naturally occurring objects. Is a perfect clone of a wild animal an artifact?

• One solution lies in asking as to what the intention must be considered….

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The Ontology of IP-types and tokens

• Thus: a field full of a food crop consists of artefactual and non artefactual components. While the arrangement of the rows of plants, and the selection of seeds used to sow the field were intentional, the particular arrangement of genes that makes the crop desirable was not intended, even if the crop itself was selected for over time

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The Ontology of IP-types and tokens

• What is missing from the definition "all man made objects intentionally produced" is a more refined view, in which artifacts, whose whole form may in fact be intentional, and which are expressive of a specific idea, nonetheless contain non-artefactual components. Artifacts may consist of non-artefactual parts. Moreover, artefactual activities can result in non-artefactual outcomes, including products that are natural

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Isolation and purification are inventive, their products often aren’t• As with adrenaline…• As with O2…• As with BRCA 1 & 2…

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Artefacts and Invention

Courts could reasonably finally jettison the conflation of product with process and abandon the “isolated and purified” myth… O2=O2, even while the means of accumulated it in a purified form might be new and inventive.

Similarly, BRCA1 and 2 are natural, not artifactual, and un-susceptible to patent under the dictates of both reason and case law.

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Artefacts and Invention

• An artefact = man-made, intentionally produced new object

• Excludes products of nature• Excludes accidents

The Hydrogen engine itself is patentable, and never H2O

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Thank you

• http://davidkoepsell.com