Monday, March 21, 2011

Slavery and Gene Patents

Harvard College v Canada (Commissioner of Patents), 2002 SCC 76, [2002] 4 SCR 45

Patentable subject matter is a hot topic these days, from Bilski in the USSC, to the reference regarding Programs for Computers G 3/08, in the EPO, to the decision of Phelan J in 2010 FC 1011, which is now on its way to the FCA. Here is a shameless plug: I have three papers on this topic. In the first, I argue that this area of the law has suffered from the conflation of two distinct doctrines: the rule against abstract claims, which prohibits abstract claims in any field of endeavour; and field-specific exclusions, which prohibit patents in a particular field, regardless of whether the claim is abstract or applied. From this distinction I develop a general framework for approaching the issue, and I then apply that framework to argue that Phelan was right for the right reasons. The second paper looks at the history and principles behind the rule against abstract claims. The third is a criticial analysis of the US jurisprudence, in which I argue that the USSC has pretty much gotten it all wrong, and while Canadian law generally is in much better shape, Schlumberger, which followed the USSC, was wrongly decided.

Back to the topic of this post. In Harvard Mouse the majority in the Supreme Court held higher life forms to be unpatentable subject matter. The majority’s view was that a variety of concerns unique to higher life forms meant that patents are not “the appropriate vehicle” for protecting this type of invention [120]. The majority raised a variety of objections, but for the most part these were not particularly powerful, in the sense that even if one accepts their validity, they did not seem to present enough of a problem to warrant a wholesale denial of patents in a productive new field of technology. The majority’s argument was that all these objections cumulatively indicated patenting of higher life forms just doesn’t fit well with the Patent Act. Perhaps this was the majority’s real concern, but my sense is that one argument in particular tilted the balance. This is the “[t]he potential for commodification of human life” [176], which the majority termed “the most significant issue addressed by the [Canadian Biotechnology Advisory Committee]” [175].

Both Rothstein JA, writing for the majority at the FCA 2000 CanLII 16058, and Binnie J for the dissent in the SCC, in effect conceded the point that the Patent Act could not be extended to people, as the Act could not condone slavery (and this would be bolstered by the Charter if necessary) [SCC 54], [FCA 207]. By conceding that humans, at least, are excluded from patentability, the question becomes whether to draw the line at humans, or higher life forms generally.

With respect, this concession seems to rest on a misapprehension as to the nature of patent rights. In the FCA Rothstein J said “Patenting is a form of ownership of property. Ownership concepts cannot be extended to human beings” [207]. It is true that patents are a form of property, but it does not follow that patenting human beings amounts to ownership of human beings. The Patent Act gives the patentee the sole right of “making, constructing and using the invention and selling it to others to be used,” but it does not make infringing embodiments the property of the patentee: “ownership does not flow to the patentee” Diversified Products Corp. v. Tye-Sil Corp. 25 C.P.R. (3d) 347. The usual consequence is that if the infringing article can be rendered non-infringing, an order for delivery up will not be granted, as property in the physical components rests with the defendant. More generally, an order for delivery up or destruction is a form of mandatory injunction, and as such, it is undoubtedly discretionary. So, if a person with a heart condition were to go to another country in order to have a patented stent implanted without paying a royalty, that person might be required to pay damages for using the patented stent, but no court could ever properly exercise its discretion to order delivery up of the stent, even if it could not be rendered non-infringing. The property in the stent does not pass merely by the fact of infringement. Accordingly, there is no need to draw any line between a patented wheelchair, which might be subject to an order for delivery up, to a patented prosthetic, which likely would not be, to a patented stent, which certainly would not be, to patented gene therapy, in which a patented gene might be inserted in the DNA of every cell of a person’s body. The person in each case might be an infringer, and subject to damages, but in no case does the property in the particular embodiment transfer automatically to the patentee. In every case it is a matter for the sound discretion of the court. There are difficult borderline cases as to how this discretion should be exercised, but gene patents are nowhere near that border. The question of slavery does not arise, not because the Patent Act does not extend to human beings, but because even if it did, infringement of a patent does not give the patentee a property right in the infringing embodiment.

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