Never mind the rigid rules -- be fair to patentees, says judge

Ont Saturday, 4 December, a seminar --  "Comparative Perspectives on Protecting Products by Patents" -- was organised by Justine Pila and Graeme Dinwoodie and held St Catherine's College, Oxford.  Fellow blogger, legal practitioner, podcaster and IP enthusiast Peter Groves, who was present, has recorded some of his thoughts for PatLit:

"The law should concentrate less on rigid rules about claims and more on being fair to patentees having regard to what they have invented, Mr Justice Floyd told a seminar on Protecting Products by Patents in Oxford last Saturday. Contrary to the expectations of opening speaker Daniel Alexander QC's wife, some 40 enthusiasts turned up to discuss the subject (or at least to listen).

Sir Christopher reviewed a series of cases going back to the 1840s on the paradoxical question of establishing the novelty of a known product by reference to a process, by way of the intention of the alleged infringer. It was fascinating stuff, and if it might have seemed arcane it was only necessary to reflect on the speaker's prefatory remarks - an abstract, intangible invention is packaged into claims, giving lawyers a set of words on which they can work. There is, however, he said, a risk of losing something in the course of packaging the invention up in this way - "the tail of the packaging can be seen to be wagging the dog of the invention." In creating a body of rules we might have restrained our ability to give protection to the inventive concept - whereas (as Prof Rochelle Dreyfuss of New York University explained later) in the US it is the scope of patentable subject matter that determines these things, not the claims.

It seems we might be moving towards concentrating on what is patentable and getting less hung up on the language of the claims. Swiss claims and Mobil claims have come and gone, and the Monsanto case (Case C-428/08, Monsanto Technology LLC v Cefetra BV and Others), which provided the inspiration for the seminar, marks an attempt to secure protection under the same rubric. The Court held that Article 9 of the biotech directive did not give protection for the DNA sequence in the soy meal, where it was not doing its herbicide-resisting job, even though it had done that job in the plant and could do it again if the meal were treated in a particular way - a "purpose-bound" approach which limits the scope of protection of the patent".