1. 1
IP law and a theory of technical
artifacts
David Koepsell, Delft University of Technology, NL
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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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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…
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
