This paper was written for delivery at a BLACA meeting on 14 January 2010. The powerpoint slides are available at http://www.blaca.org/meeting.htm and http://users.ox.ac.uk/~lawf0169/pdfs/blacaseminar, pila rev.pdf

In Generics Ltd v Lundbeck A/S (2009) UKHL 12, the House of Lords affirmed the validity of a patent for a chemical product - an isolated stereoisomer - supported by a method of producing the product, but protecting the chemical product as such independent of the method by which it was made. In so doing, it appears to have resolved a longstanding tension between granting patents for chemical products and requiring that the scope of monopoly rights equiperate with the disclosure in the specification. It also appears to have rejected the Biogen Inc v Medeva plc (1997) RPC 1 (HL) view of the balance to be struck between inventors and the public, and the commitment expressed by Lord Hoffmann in that case to promoting "research and healthy competition." However, their Lordships' decision is a limited one, applying only to single isolated chemical products. Further, their support for distinguishing categories of claims leaves scope for adopting a different approach with respect to other types of products. In this article I consider one such approach, consistent with the reasoning of the Biogen case, and focused on the purpose of the patent system and the impact of a patent on the relevant art. Such an approach has support in contemporary law, pre-1977 patent jurisprudence, and the intent of the European drafters themselves. Provided its aim is to ensure proportionate protection, any differential treatment across technological fields ought not to constitute discrimination within the meaning of TRIPS or UK patent jurisprudence. Indeed, such treatment may be required precisely to ensure a technologically-neutral patent system.

In Burge v Swarbrick, the High Court of Australia delivered an important decision on the most elusive of works protected by copyright: the work of artistic craftsmanship (WAC). Drawing on the history and reasons for that protection, and adopting the analysis of Lord Simon in Hensher, the Court affirmed the orthodox view that such works have 'special status' in law on account of their 'real artistic quality'. In its judgment, whether a work has that quality depends on whether it is a work of craftsmanship the artistic form of expression of which is sufficiently 'unconstrained by functional considerations'. In this paper I consider that view, and other aspects of the Court's decision. I suggest the requirement for artistic quality is simply a requirement for a WAC 'not imaginary, unreal or apparent only'. Further, the properties of this type of work are better conceived in historical terms than the formal aesthetic terms of the Court. On this view, whether an object is a WAC depends on both its properties of form and the history of its individual production, meaning the (subjective) intent of its individual author and view of society with respect to its nature. The same view finds support in the reasoning in Burge, and is consistent, too, with the judgment in Hensher, as well as more recent UK cases. As those cases reflect, even conceived in historical terms, WACs are not exceptional works but rather paradigmatic works, contrary to the orthodox view above. The fact that they are functional too does not lessen their need for artistic quality, undermining the support of previous cases, including Desktop Marketing Systems, for extending the statutory categories of works to ensure that functional considerations do not constrain the scope for legal protection. Public access preprint at http://ssrn.com/abstract=1260104

In a paper recently published in the IIC, I argued against the prevailing construction of article 52(2) of the Convention on the Grant of European Patents as resolving to a single requirement for technical character. That argument was based in part on a challenge to contemporary assumptions surrounding the historical provenance of the 'technical character' theory of inventions, and article 52(2) itself, that drew heavily on an analysis of the EPC's travaux preparatoires. Hence the article's subtext, that the travaux preparatoires can be of value in contemporary debates regarding European patent law, not only for the insights they offer on substantive matters of patentability, but equally for the insights they offer on regional lawmaking processes themselves. In the light of that value it is surprising that so little academic attention has been paid to the EPC's travaux preparatoires to date. There is an important series of early IIC articles documenting the progress of each stage in the EPC lawmaking process, but no detailed study of the travaux preparatoires in relation to the central EPC provisions themselves. The purpose of the current paper is to make a modest start on filling this gap in the literature of European patent law by offering a 'pre-history' of the most contested of those provisions, article 52(2), and its counterpart in the United Kingdom, sub-section 1(2) of the Patents Act 1977. It is hoped in doing so to create a study of interest and use to the range of people engaged in the current national and international debates concerning the reach of the contemporary European patent system, and the most appropriate mechanisms for that system's reform. Public access preprint at http://ssrn.com/abstract=736064

ISBN: 0018-9855

In 2002, the European Economic and Social Committee ("ESC") described the doctrinal premise of the European Patent Office's interpretation of article 52(2) of the European Patent Convention as "the product of legal casuistry". The purpose of the current article is to consider that description, and ask whether it's fair, or whether the EPO's approach to article 52 is better ascribed to problems inherent in the EPC itself. Three issues are addressed to that end. The first is the object of the ESC's criticism: article 52(2) and its interpretation by the EPO's Boards of Appeal. The second is the context and substance of the criticism itself: the European Commission's Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions, and the scathing response it attracted from the ESC. And the third is the question of the criticism's validity: can the EPO's approach to article 52(2) be defended against the charge of casuistic reasoning, and if it can, does it follow that the approach is satisfactory? Public access preprint at http://ssrn.com/abstract=593881

ISBN: 0018-9855

Public access preprint at http://ssrn.com/abstract=303999

ISBN: 0313-0096

Introduction available at http://ukcatalogue.oup.com/product/9780199296941.do and http://ssrn.com/abstract=1499578.

ISBN: 978-0-19-929694-1