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New Zealand Law Students' Journal |
Last Updated: 24 September 2015
MORALITY IN PATENT LAW
NATHAN
LUSCOMBE
Introduction
Biotechnology is a fast growing, cutting-edge industry that lies at a
peculiar intersection between science and commerce, the patent
system lying at
that intersection. Biotechnology is a truly disruptive element in the global
knowledge economy. Where previous industrial,
scientific and economic shifts
(such as the industrial revolution) have altered the way we live our lives,
biotechnology has the
potential to alter the very nature of life itself.
This opinion will explore the question of what role (if any) morality
should play in considering whether something should be allowed
to be patented,
and will consider:
This
opinion will proceed with the definition of “biotechnology” as
suggested by the committee of experts of WIPO, and
used in the Law Commissions
1990 report on intellectual property law reform:
[1]
Biotechnology includes all techniques using animals, plants, microorganisms and any type of biological material which can be assimilated to microorganisms, or which can create organic changes therein.
II.
Current role of morality in patent
law
This section will give a brief outline of the relevant statutory
provisions in New Zealand and the European Union, as this opinion
will make
reference to these jurisdictions in further discussions. Reference will also be
made to the United States of America in
further discussion, however that
jurisdiction contains to morality clause in their relevant legislation.
A. New Zealand
The Patents Act 1953 (the 1953 Act) contains a morality provision which
reads:[2]
(1) If it appears to the Commissioner in the case of any application for a patent that the use of the invention in respect of which the application is made would be contrary to morality, the Commissioner may refuse the application.
The Patents Bill 2008 (now the Patents Act 2013,
referred to henceforth as the 2013 Act) contains the following provision (not
yet
in force at the time of writing this
opinion):[3]
15 Inventions contrary to public order or morality not patentable inventions
(1) An invention is not a patentable invention if the commercial exploitation of the invention, so far as claimed in a claim, is contrary to—
(a) public order (which in this section has the same meaning as the term ordre public as used in Article 27.2 of the TRIPS agreement); or
(b) morality.
Examples
The commercial exploitation of the following inventions is contrary to public order or morality and, accordingly, those inventions are not patentable:
The given examples are not a code, but rather a
guideline as to what might be contrary to public order or
morality:[4]
...The committee has recommended that the bill be amended to include a list
of examples of inventions where exploitation is considered
contrary to public
order or morality and hence are not patentable. This will provide guidance as to
the type of inventions excluded
from patent protection under that
provision.
Patent decisions in New Zealand are made by the Intellectual
Property Office of New Zealand (IPONZ) following a filing of specifications
and
formal examination. Formal hearings before the Commissioner of Patents are
possible.[5]
B. The European Union
The European Patent Convention provides
that:[6]
European patents shall not be granted in respect of:
(a) inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
The principle body in the European
Union responsible for the granting of patents is the European Patent Office
(EPO), which is made
up of a Receiving Section, and Examining Division, an
Opposition Division, a Board of Appeal and an Enlarged Board of
Appeal.[7]
III.
Reasons why morality should play a role
in the patent system
A. The moral content inherent in the patent
system
According to Peter Drahos, the creation, operation and interpretation of
the patent system is linked to moral standards. Patents are
a form of property
right, property being a key institution of social and political morality.
Patents exclude others from the use
of resources, and thus have an inherent
moral content.[8]
Further to
this, patent law can be seen has having an inherent moral content because it can
be seen as a recognition and extension
of John Locke’s theory, that the
mixing of ones labour with the natural environment creates a moral entitlement
to the fruits
of that labour. [9]
Drahos argues that moral debates about patentability must be had within
the patent system, because the patent system has an important
causal role to
play in the evolution of biotechnology, as the definition of property rights has
historically had a major impact on
economic
growth.[10]
On this basis,
morality should play a role in deciding whether something should be patented or
not, as the patent system already has
an inherent moral content, and it would be
artificial to remove any moral inquiry from it.
B. The controversial nature of biotechnology and the purposes of patent law
Section 3 of the 2013 Act sets out that:
3 Purposes
The purposes of this Act are to—
(a) provide an efficient and effective patent system that—
(i) promotes innovation and economic growth while providing an appropriate balance between the interests of inventors and patent owners and the interests of society as a whole...
Thus, a balancing act must be
conducted between economic and scientific progress, and the interests of society
as a whole. It could
be argued that the interests of society include moral
interests – this may be particularly so for patent law (and especially
in
an area such as biotechnology), for the same reasons as those mentioned above at
III A; the patent system is linked both to economic progress and is
imbued with moral content, concerned as it is with property rights,
and thus
(according to Drahos) moral discourse must be had within the patent system.
This suggests that morality should have a role to play in New
Zealand’s patent law system, as that would be consistent with
the purposes
of the 2013 Act.
IV.
Reasons why morality should not play a
role in the patent system
A. The inherent ambiguity of morals and the diversity of moral objections to biotechnology patents
The basis for moral objections to the patentability of biotechnology can
be broadly placed into two categories of moral theorizing:
deontological and
consequentialist.
1. Deontological
Deontological arguments are those that propose that the moral element of
some act is inherent in the act
itself.[11]
David Resnik
identifies three main deontological arguments against the patentability of
biotechnology. The first of these has an overtly
biblical basis, and is an
argument to the effect that patenting biotechnology goes against Christian
values.[12] The second is that DNA
represents our common heritage, and it would therefore be immoral to patent
biotechnology concerned with out
DNA.[13] The third is that by
patenting biotechnology, we are commodyfing
nature.[14]
Each of these
arguments is open to significant criticism. The first argument rests on
religious beliefs that may not be shared by
all of the members of the
population. The second is problematic in that it attaches value to something
that might to many people
seem a very abstract concept. The third argument seems
to ignore the fact that humanity has been commodifying nature seemingly since
the agricultural revolution – we have for centuries traded in natural
goods, both inanimate (such as precious metals) and living
(such as livestock).
2. Consequentialist
Consequentialist moral theorising can be seen as the opposite to
deontological theorising – it looks to the consequences of
an act as
determining the objective morality of that
act.[15]
Resnik identifies
one major consequentialist argument: the utilitarian argument. According to this
argument, we should not allow products
of nature to be patented because that
will stifle scientific innovation and
discovery.[16]
A major
problem with that argument is that it is too quick to jump to the conclusion
that biotechnology can be categorised as a product
of nature. This concern is
alleviated somewhat by the invention/discovery dichotomy, discussed later at
IV B 2.
The above considerations show that there are a variety of
moral objections to the patentability of biotechnology, and that these
objections
themselves are open to criticism. Each of these objections and their
corresponding criticisms may find validity in the minds of each
individual. The
heterogeneity of moral opinions amongst a population may therefore be very great
– this may be true both of
the general public, and of those who actively
participate in the patent system, either as those seeking patents, or those
granting
them. This diversity of moral standing demonstrates that the inclusion
of morality into deciding whether something should be patented
or not is open to
the possibility of widely differing interpretations, possibly leading to the
creation of an incohesive body of
law on the matter.
B. The potential for redundancy of the morality requirement.
1. The Plant Genetic Systems herbicide resistant
(Transgenic) Plant
case[17]
Cynthia Ho
examines the course of this case through the EPO’s Opposition Division and
Board of Appeals in detail, and arrives
at the conclusion that the decision in
that case by the Board of Appeals is such that as long as an invention does not
have a solely
destructive use, the morality provision of article 53(a) of the
European Patent Convention will not
apply.[18]
This suggests that
the morality criteria has been given such a narrow interpretation in Europe as
to be almost redundant. Because
patent regimes across the world are becoming
more harmonised,[19] it is possible
that New Zealand may adopt such an approach, and if such an approach were to be
adopted in New Zealand, s 15 of the
2013 Act might be rendered nearly redundant.
As set out at II A above, New Zealand’s Parliament
is already taking a more prescriptive approach as to what biotechnological
inventions may be
contrary to public order or morality. This suggests that the
role of the morality criteria under s 15 of the 2013 Act has already
been
restricted somewhat (though the examples given under s 15(1) are not a code).
2. The invention/discovery dichotomy
The outcome in Association for Molecular Pathology v Myriad
Genetics[20] was determined on
the technical ground of the invention/discovery dichotomy (the United States
having no morality provision in their
relevant legislation). This suggests that
moral concerns can be alleviated through the dichotomy, such as those concerned
with the
patenting of humanities “common heritage”. The case
demonstrates that a technical approach to the patentability of biotechnology
can
yield the same results as if a moral criteria had been applied.
The
considerations at IV A, however, show that the moral issues
concerned with biotechnology are extremely diverse. For that reason, the
invention/discovery
dichotomy alone is unlikely to alleviate the moral concerns
of the public, and is thus on its own not a reason for the abolishment
of
morality criteria in the patent system.
C. An economic case against the inclusion of morality into patent law
According to Oliver Mills, the patent system was designed primarily to
advance economic interests.[21] On
this basis, it would be inappropriate to include moral criteria into the
decision making process in considering whether something
should be patented or
not. Because the patent system as a whole is concerned with economics and not
morality, the inclusion of moral
criteria would be inconsistent with the rest of
the system, potentially leading to an unacceptable level of uncertainty on the
part
of innovators as to whether their inventions can actually be patented or
not. This uncertainty could lead to a reduction in investment
in biotechnology.
After considering a number of European patent application cases, Milius
and Townend conclude that there has been an inconsistent approach
on the part of
the relevant patent granting authorities as to the issue of
morality.[22] This suggests that the
inclusion of morality into patent law has led to uncertainty on the part of the
authorities that must make
the decision as to whether an invention can be
patented or not. Demonstrable uncertainty on their part could lead to a decrease
in
the perceived attractiveness of investing in the biotechnology sector on the
part of potential innovators.
These considerations are particularly
important in the New Zealand context. According to the New Zealand Institute of
Patent Attorneys
for New Zealand Trade and Enterprise (who use the term
“life sciences” to describe technology concerned with animal health
and crop quality):[23]
The life sciences support the backbone of the New Zealand economy...As we
move away from commodity exports and into the knowledge
economy, getting value
from the life sciences depends upon good management of intellectual property.
Thus, the inclusion of morality into the patent system could, should it
lead to high levels of uncertainty on the part of innovators
and on the part of
the patent examiners, affect New Zealand’s competitiveness in the
biotechnology field, with negative consequences
for the future growth of the
economy.
D. Patent law is not the proper forum for such debate
In examining European patent case law, Cynthia Ho identifies a number of
problems with incorporating morality into patent law. One
of these is the fact
that even if patent offices conducted thorough evaluations of morality, it is
unlikely that all parties would
be satisfied, due to the fact that issues of
morality are highly
controversial.[24]
This is
particularly apparent in the case of biotechnology. As discussed at IV A,
there are a number of different arguments both for and against the patentability
of biotechnology. The appropriate forum for deciding
whether biotechnology can
be patented should be the legislature. Parliament is equipped to facilitate such
a debate, having the mechanisms
(such as the ability to initiate referenda),
policies and history of practice to hear and take into account these varying
considerations.
As Margo Bagley argues; issues of morality and patenting should
not be left to scientists, or individual examiners, as no one person
is
competent enough to decide and resolve such
issues.[25]
The
Harvard/Transgenic Animal proceedings (commonly known as the
“Oncomouse” proceedings) saw the same result in the Unites States
and Europe; a patent
was granted over mammals bred with a particular genetic
alteration to make them more susceptible to
cancer.[26]
This shows that
morally controversial subject matters have been patented in jurisdictions with
and without moral criteria. This suggests
that those participating in the patent
system tend to subscribe to a particular moral view – in the European
proceedings, for
example, the European Patent Office Examination Division
adopted a utilitarian approach to the moral dimension. That shows an express
disregard for the deontological views, which may be held by many in society. The
patent system therefore has a tendency to represent
morality from only a slice
of society; it would therefore be appropriate for the legislature to be far more
prescriptive on the role
of morality in patent law.
This is supported by
Milius and Townend, who consider that United States approach of referring moral
matters to Congress for consideration
is more consistent with democratic
principles than leaving such things to be decided by unelected public
servants.[27]
In
Wisconsin Alumni Research Foundation and Wicell Research Institute Inc v The
Commissioner of Patents the Assistant Commissioner of Patents avoided a
substantial discussion on the morality requirement under s 17 of New
Zealand’s
1953 Act with regards to stem cell research; choosing instead to
refer to other legislation which dealt with the monitoring and approving
of stem
cell research.[28]
Further
to this, Ho identified that Patent examiners are trained to evaluate the
technical merits of inventions, not their moral
content.[29]
This is further
authority for the proposition that patent law is not the appropriate forum to
decide on the morality of inventions,
particularly where biotechnology is
concerned. The Wisconsin case demonstrates the speed with which recourse
is had to other legislation were it is available, and Ho’s considerations
show
that the actors in the patent system are not trained ethicists, and are
therefore not the appropriate people to be making such decisions.
Decisions on
the morality of biotechnology patents are arguably of such importance that only
the legislature should determine them
– as stated in the introduction to
this opinion, biotechnology has the potential to alter life itself.
An
inquiry under s 17 of the 1953 Act requires the Commissioner to look to the
future use of an invention.[30] This
could be an ambiguous exercise. The future is anything but certain, and this is
particularly so in the rapidly advancing field
of biotechnology. It is possible
that any new invention could have potentially immoral uses.
Firearms are
inventions that routinely serve immoral purposes, yet patents are often granted
in respect of such technologies. This
reflects an attitude on the part of patent
authorities around the world that looking to the future use of an invention is
something
to be left to other legislation, (such as gun control laws). This
could be extended to biotechnology; it might be better to leave
the moral
considerations out of the process, and deal with them in separate legislation.
V.
Conclusions
In conclusion, patent law and morality are inextricably intertwined, as
set out by Peter Drahos. Furthermore, the interests of society
may require the
examination of morality when deciding if something should be patented or not.
In spite of this, the patent system is not the appropriate forum to
deliberate and decide on such matters. The current legislative
framework confers
on the patent authorities a discretion to decide on matters of morality, but as
the above considerations have shown,
this may be inappropriate. It should left
to the legislature to decide on the moral issues of patentability, as it is the
legislature
that will best be able to determine the moral interests of society,
not the patent authorities.
Thus morality does have a role to play in
considering whether something should be patented or not – but it should
not be left
to the patent authorities to determine the scope or application of
that role.
[1] Law Commission Intellectual property: the Context for Reform (NZLC R13) at 59.
[2] Patents Act 1953, s 17(1).
[3] Patents Act 2013, s 15.
[4] (12 September 2012) 683 NZPD 5157.
[5] Paul Sumpter Intellectual property Law: Principles in Practice (2nd ed, CCH New Zealand Limited, Auckland, 2013) at 245.
[6] European Patent Convention (signed 5 October 1973, entered into force 7 October 1977), art 53.
[7] At art 15.
[8] Peter Drahos “Biotechnology patents, markets and morality” (1999) 21 EIPR 441 at 441.
[9] John Locke, Two Treatises of Government, Peter Laslett (ed) (Cambridge: Cambridge University Press, 1988) at 285-302.
[10] Drahos, above n 8, at 447.
[11] Alexander, Larry and Moore, Michael, "Deontological Ethics" (2012) The Stanford Encyclopaedia of Philosophy <http://plato.stanford.edu/archives/win2012/entries/ethics-deontological/> .
[12] David B. Resnik Owning the Genome (State University of New York Press, New York, 2004) at 75.
[13] At 77.
[14] At 82.
[15] Sinnott-Armstrong, Walter, "Consequentialism" (2012) The Stanford Encyclopaedia of Philosophy <http://plato.stanford.edu/archives/win2012/entries/consequentialism/> .
[16] Resnik, above n 12, at 74.
[17] Greenpeace UK v Plant Genetic Systems N.V. (1992) Opposition Div EPO , (1993) 24 INT'L REV INDUS PROP & COPYRIGHT L 618.
[18] Cynthia M. Ho “Splicing Morality and Patent Law: Issues arising from Mixing Mice and Men” (2000) 2 Washington University Journal of Law & Policy 247 at 266.
[19] Sumpter, above n 5, at 242.
[20] Association for Molecular Pathology v Myriad Genetics 569 US 12-398 (2013).
[21] Oliver Mills Biotechnological Inventions: Moral Restraints and Patent Law (2nd ed, Ashgate Publishing, Farnham, (UK), 2010) at 11.
[22] Djims Milius and David Townend “Thoughts on the Scope and Operation of Morality Clauses in Patent Law” (2008) 7 Patentnemnd uten portefølje? En analyse av etiske utfordringer ved patentering 76 at 94.
[23] New Zealand Institute of Patent Attorneys for New Zealand Trade and Enterprise “The Intellectual Property Guide for the Life Sciences in New Zealand” (Wellington, 2004) at 1.
[24] Ho, above n 18 at 283.
[25] Margo A. Bagley “A Global Controversy: The Role of Morality in Biotechnology Patent Law” in Peter Yu (ed) Intellectual Property and Information Wealth (Praeger Press, Westport (Conn) 2007) at 339.
[26] “Bioethics and Patent Law: The Case of the Oncomouse” WIPO Magazine (Geneva, June 2006 Issue 3) at 16.
[27] Milius and Townend, above n 22, at 85.
[28] Wisconsin Alumni Research Foundation and Wicell Research Institute Inc v The Commissioner of Patents [2007] NZIPOPAT 22.
[29] Ho, above n 18, at 284.
[30] Pfizer Inc v Commissioner of Patents [2004] NZCA 104; [2005] 1 NZLR 362 at [51].
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