TIP Group Conference 2014, Day 1: History, Rationales, and Effectiveness of the Patent System

Disclaimer: Views expressed are solely those of Andrew Moeser and Laurence MacPhie, and do not represent the opinions or positions of Gilbert’s or Bereskin & Parr.

On March 3, 2014, Andrew Moeser and Laurence MacPhie kicked off the annual TIP conference with a primer on patents and concepts and issues in the patent system. Mr. Moeser is an associate at Gilbert’s LLP. He has an MSc in biology and experience coordinating clinical trials. His legal practice focuses on intellectual property litigation, civil litigation, and regulatory law. Mr. MacPhie is an associate in the Biotechnology and Pharmaceutical Practice Group at Bereskin & Parr LLP’s Toronto office. Prior to entering law, he was a Commonwealth Scholar at the University of Oxford where he completed his DPhil on the genetics of complex traits. His legal practice focuses on drafting and prosecuting biotechnology, chemical, and pharmaceutical patents, as well as advising on patent strategy and providing opinions with respect to validity, infringement and freedom to operate.

Mr. Moeser kicked off the presentation with a primer on the basics of patents, reviewing the nature of the 20 year monopoly granted by patents and the criteria for patentability (novelty, non-obviousness, usefulness, and disclosure). He explained that the patent monopoly entails a right to exclude others from practicing what is defined in a patent’s claims.

Mr. MacPhie then went into the justifications underlying the patent system and issues with it. He discussed the “bargain theory” of patents currently favoured by the Courts: the monopoly is granted to an innovator in exchange for disclosure. Mr. MacPhie also discussed philosophical justifications for patent rights including labour-based justifications (Locke), possession of the invention (Hegel-Kant), and distributive justifications.

Mr. MacPhie reminded us that patent rights do not exist in a vacuum. As such, issues with the patent system can often be addressed by other regimes. Mr. Moeser returned to give a background on the issues concerning the patent system. Essentially, the challenge is to balance access and innovation.

Focusing on the health-care field, Mr. Moeser also explained that patent disputes can be either the typical brand-name-company-versus-generic-company or between two innovator companies where one innovator “fences in” the chemical space with broad claims.

Lastly, Mr. Moeser gave a brief overview of how health care patent issues can impact patients. He explained that access to drugs and diagnostic tests, availability of research tools for new drugs and medical devices, and patent rights in genes are all affected by the patent system.

Summary by Brian Nguyen.