Meera Nair

Posts Tagged ‘patents’

the bad, the good and the expensive

In Posts on February 5, 2013 at 2:29 pm

A persistent cold has sidelined me for a few days; reading is the silver lining.

the bad

InfoJustice’s latest bulletin provides details of Eli Lilly’s challenge to Canada’s patenting system. Eli Lilly’s patent for Strattera, a drug used to treat ADHD, was invalidated by Canadian courts on the grounds that the drug did not live up to expectations. Eli Lilly is pressing their claim via NAFTA, which allows multinational corporations to seek compensation from Canadian taxpayers.

“Invention” is defined as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.”  Eli Lilly complains  that:

In a series of decisions issued since 2005, the Federal Court of Canada and the Federal Court of Appeal have created a new judicial doctrine whereby utility is assessed not by reference to the requirement in the Patent Act that an invention be “useful”, but rather against the “promise” that the courts derive from the patent specification. This nonstatutory “promise doctrine” is not applied in any other jurisdiction in the world.

If the Federal Courts do not construe a promise from the patent, the statutory requirement for utility that historically required only a “scintilla of utility” applies. However, if the Federal Courts derive a “promise” from the patent specification (for example, to treat a human disease with fewer side effects) then utility is measured against that promise, and the patentee is required to prove that it had demonstrated or soundly predicted the promised result as of the date the patent was filed (paras 37-38).

Eli Lilly insists that such a standard violates Canada’s international obligations and creates a climate of “uncertainty and unpredictability”:

A patentee cannot know how the promise will be construed by the Federal Courts. Some Justices have looked only to the claims to derive the promise, other Justices have derived a promise from statements made within the patent disclosure, while others have “implied” a promise from the nature of the disease treated by the invention (para 43).

While the company laments the seeming capriciousness of our Judges, readers are likely to understand that different drugs in different circumstances may very well entail different perspectives. The timing (beginning in 2005) is interesting, coming as it does after 2004 when our Supreme Court emphasized the importance of a case by case analysis of  questions of fair dealing v. infringement. “Uncertainty and unpredictability” are the better byproducts of an information society, far better than the certainty of poor consumer satisfaction that comes when international corporations are able to monopolize market places.

InfoJustice’s bulletin draws from Public Citizen’s Global Trade Watch which gives the full story of Eli Lilly’s “inventive interpretation” of our trade agreements and makes plain how dangerous these proceedings are in matters of overall access to medicines. Public Citizen concludes with:

The outcome of Eli Lilly’s investor-state attack under NAFTA is critical for those seeking to safeguard countries’ ability to determine the patent standards they believe serve the public interest in access to affordable medicines. It is critical not just to protect Canada’s prerogative to end patents found to not deliver promised results, but to avoid instilling other governments with fear of investor-state reprisal for similar policies to rein in medicine costs. It is critical not just so that Canadian taxpayers can ensure that the demanded $100 million goes to more worthy ends than enhancing Eli Lilly’s profit margin, but to avoid emboldening other pharmaceutical firms contemplating the launch of similar investor-state demands against other governments seeking to balance the rights of consumers and pharmaceutical firms. As the Eli Lilly case gets under way, negotiations for the TPP and its proposed expansion of the investor-state system continue. Stopping the NAFTA expansion deal presents health advocates with today’s biggest opportunity to halt the advance of the system that empowered Eli Lilly’s audacious threat.

the good

Writing for the New Yorker, Columbia law professor Tim Wu describes a fascinating story about an indie film “surreptiously shot inside of Disney World.”  Wu refutes assertions that the filming violated intellectual property rights; fair use and social commentary feature prominently in his explanation. Spoiler alert: the full plot of the story is given so if you are inclined to see a movie where “Disney World is not as simple window dressing [but transformed] into something gruesome and disturbing,” then you may not wish to read Wu’s article.

the expensive

Writing for the Globe and Mail, Frances Bula reports that TED is coming to Vancouver for 2014-2015. The Tourism Commission of British Columbia hopes that the presence of TED will further position Vancouver as an internationally recognized site of creative thinking. Tickets to TED events run at $7,500.00; I hope that some effort is made to include Vancouver’s high-school teachers in the audience — they are among the first to encourage future creators.

Update: February 7, 2013.  More on TED in Vancouver; by Mike Chisholm writing for the Vancouver Observer.

Update July 23, 2013. Glenn Moody, writing for Techdirt, gives the news that Eli Lilly is now claiming $500 million in damages from Canada.  “What’s troubling is that similar [investor-state dispute settlement] schemes are being negotiated for both TPP  and TAFTA/TTIP.  That will give corporations even more opportunities to sue nations for supposed “expropriation”, and to challenge perfectly legitimate local laws that dare to stand in the way of bigger profits.”

But can you take peanut butter?

In Posts on September 11, 2010 at 1:16 pm

A new academic year is underway, but for D. it is more than just a change of grade. A new school, a new routine, and renewed exploration into the all important question: Can you take peanut butter to school?

For years I’ve laboured over lunch menus, thinking of tasty-and-healthy entrees that lent themselves to a packed lunch. Yet on numerous occasions we still relied on the ease of PB & J. But last year that was not an option as an allergy alert required that PB be banned from that classroom. I understood only too well; D. is at risk for anaphylaxis from other sources. In her case I’m just grateful that she has to eat the offending item before disaster can strike. How parents whose children react to airborn input ever find peace of mind, I don’t know…

In any case, the revived attention to peanut butter brought to mind U.S. Patent Number 6,004,596 for a “Sealed Crustless Sandwich.” The patent details are online (complete with sketches). Here are a few highlights:

… The sandwich includes a lower bread portion, an upper bread portion, an upper filling and a lower filling between the lower and upper bread portions, a center filling sealed between the upper and lower fillings, and a crimped edge along an outer perimeter of the bread portions for sealing the fillings there between. The upper and lower fillings are preferably comprised of peanut butter and the center filling is comprised of at least jelly…

Field of the Invention:
… some individuals do not enjoy the outer crust associated with the conventional slices of bread …Hence there is a need for a convenient sandwich which does not have an outer crust and is not prone to waste of the edible outer crust portions….

Description of Prior Art [meaning the other sandwich patents]
… While these sandwiches may be suitable for the particular purpose to which they address, they are not as suitable for providing a convenient sandwich without an outer crust which can be stored for long periods of time without a central filling from leaking outwardly….

This patent was applied for in 1997, issued in 1999, and canceled in 2007.

James Boyle describes these events in his work, The Public Domain: Enclosing the Commons of the Mind (2008), available for purchase, or, for free download here. He addresses the assumptions made of intellectual property, that by providing property rights to intellectual work, creativity will ensue.

In mathematics, when confronting a blanket proposition, the task is usually to “prove” or “disprove.” I am always tempted to reach for “disprove,” knowing that all I need is one counter-example. Boyle describes the absurdity of Patent #6,004,596 (p.xi) coupled with the aggressive behaviour of its owner (p.249-250) and it becomes evident that for the patent-owner this was not about creativity but an unashamed effort to undermine the competition.

It would be nice to simply add QED and pronounce this debate over.

But life is not as neat as mathematics. Statistics Canada recently posted the outcome of the 2008 Survey of Intellectual Property Commercialization in the Higher Education Sector. The survey is described as tracking “the progress of innovation in this area.”

That language is troubling, as if innovation is such that it can only be measured by the numbers of patents and copyrights established each year. With that convoluted logic, universities may hasten to increase their claims on IP, as evidence of their level of innovation. But is this wise either for the overall operation of a university or for the pursuit of creativity?

Looking more closely at the Statistics Canada analysis it shows that the cost of managing the IP infrastructure rose by approximately 20% in one year – $41.9 million in 2007 to $51.1 million in 2008. In part, this can be attributed to an increased need for staff; the number of full-time equivalent personnel involved increased from 285 in 2007 to 321 in 2008. [327, if you look at Table 5-1; I can’t explain the difference in reported numbers.]

However, for 2008, the income derived from IP was $53.2 million, which is just $1.9 million more than the costs associated to managing the IP operations. Based on the 125 institutions that responded to the survey, this breaks down to an average gain of $15,200 per institution.

Interestingly enough, the analysis does seem to draw the distinction between achievements in research, and an IP claim in research. It states that “In 2008, the number of new inventions disclosed to educational institutions increased by almost 20% to 1,613,” and that, “The number of patents issued to Canadian universities and teaching hospitals declined by a third between 2007 and 2008 to 346.” So it could be inferred that creativity is underway, even if IP claims are decreasing.

Something else that struck me as interesting is the reporting on copyright: “there were 361 new IP disclosures for copyrights in 2008.” Looking at Table 11-1, the previous copyright holdings appear to be only 19. Does that mean it was a blockbuster year for university presses?

Results such as these do not paint a clear picture of what is actually happening on university campuses and so it is difficult to make any accurate statements or predictions. However, even with an optimistic assessment that the current IP holdings will generate future profits, and that the cost of IP management does not rise, there is still a long way to go before Canadian higher education can claim that the costs of securing IP are offset by the expense. Table 3-1 is perhaps the most revealing; it shows that intellectual property revenue only accounts for 31% of the costs of operational expenditures. In 2008, the institutions carried the lion’s share of cost (43% by base funding plus 6% accounted for by one-time allocations.) Whereas external sources put in only 20%. Granted, rewards do not come without risk, but if this was a private sector business plan, I wonder which bank would be willing to provide financing? (And I do have some experience in this area…)

Universities already promote commercialization of research through partnerships with industry as a means of funding research and securing future income. This raises the uncomfortable question of how publicly funded basic research should be capitalized upon. And there are no easy answers there. But if the agenda is to focus on matters of IP capture, a measure of realism must be included. Boyle invokes (and later describes in detail) the risks associated to the idealized view of IP as a means to encourage creativity:

[IP] is not merely supposed to produce incentives for innovation by rewarding creators, though that is vital. Intellectual property is also supposed to create a feedback mechanism that dictates the contours of information and innovation production … The system that was supposed to harness the genius of both the market and democracy sometimes subverts both. Worse, it does so inefficiently, locking up vast swaths of culture in order to confer a benefit on a tiny minority of works (p.7-9).