Chris Rourk Comments on Patent Eligibility in Asia IP

November 6, 2017 | Mentions

In an article exploring the topic of patent eligibility in different countries across the world, partner Christopher J. Rourk provided insight on the U.S. perspective. The article was published in the most recent issue of Asia IP, and gave an in-depth analysis of patent eligibility across several countries in Asia as well as the United States.

Chris’ comments centered on the question of whether or not categories of patentable inventions should be broadened. Based on the thought that patent law exists to incentivize the exchange of innovation and ideas, Chris explained that patentable categories should align with societal goals.

“Ideally, this incentive should be directed to statutory categories of inventions that have commercial and practical applications that are harmonized with specific societal objectives.”

“Ideally, this incentive should be directed to statutory categories of inventions that have commercial and practical applications that are harmonized with specific societal objectives, as opposed to fundamental ideas that are useful for a wide variety of such applications, or theoretical and analytical work,” Chris said.

Chris also addressed the fact that the patent laws in many countries only identify subject matter that is not patent-eligible and how a change in this could help governments direct innovations in certain areas.

“In that regard, a threshold question might be whether it would be a good idea for the patent laws of a country to include both positive recitations (i.e. things that are patentable) as well as negative recitations (i.e. things that are not patentable),” Chris said. “Regardless of whether amendments are in positive or negative form, though, it would seem to be a good idea to at least consider or publicly debate whether amendments are needed to help direct innovations in areas where (1) innovation is deemed valuable, and (2) innovations would otherwise be maintained in secret and not publicly disclosed.”

Digging deeper into the categories of patentable subject matter, Chris shared a potential solution to the debate on whether patents should be allowed in categories like medicine and software.

“In that regard, it might be useful to consider an identification of patentable subject matter that is more narrowly tailored, such as for medical treatments related to curing specific diseases, such as cancer or Alzheimer’s disease, or software for specific applications, such as artificial intelligence or encryption,” Chris explained.

Chris further weighed the potential outcomes of the different ways that categories may be defined:

“Rigidly defining the types of inventions that are considered to be patentable as opposed to the areas where innovation is to be incentivized might increase the risk of patents being granted in areas where they serve no compelling societal interest, by a patent examiner, which can result in patents being granted on information that was already in the public domain. Any constraints that are placed on the types of inventions that can be patented are in essence constraints on the types of information for which public disclosure is to be incentivized,” Chris said.

He went on to further explain the potential benefits of expanding the categories of patentable inventions not only in generating innovation, but also in developing a taxonomy of practical applications for new technologies.

“Such taxonomies make it easier to identify areas where what might appear to otherwise be non-obvious combinations can be more readily seen as the obvious application of a well-known technique for solving a problem in one field, to problems of the same kind in a different field, thus preventing the grant of a monopoly on information that is already in the public domain.”

For more information, read “Patent Subject Matter Eligibility,” Parts I and II in Asia IP (subscription may be required). To learn more about patent eligibility, visit Jackson Walker’s Patent Prosecution practice.