Title: Reformulating the 'inventive step' in patent law to achieve an appropriate balance between patent holders and the public

Authors: Sanil Khatri

Addresses: Law Faculty, Macquarie University, NSW 2109, Australia

Abstract: This paper focuses on the current 'inventive step' threshold enabling a higher number of granted secondary patents, a process known as 'evergreening', consequently resulting in unnecessary limitations on competition by providing protection in exchange for little technical innovation. Secondary patents create a barrier for generic competition and maximises the profitable life cycle of an active pharmaceutical ingredient for research and development companies whilst extending their monopoly over a product or process. Henceforth, lawmakers are faced with a difficult question: maintain protection through patentability of drugs at the cost of monopolistic and anti-competitive effects, or promote competition at the potential expense of innovation and investment? This paper establishes the link between present judicial and legislative delineations of the inventive step and its anti-competitive effects. Specifically, what is the appropriate level of the 'inventive step' requirement in patent laws in the context of achieving competitive and equitable markets in the pharmaceutical industry?

Keywords: inventive step; patents; patent holders; evergreening; secondary patents; pharmaceutical patents; technology policy; patent law.

DOI: 10.1504/IJTPL.2012.045946

International Journal of Technology Policy and Law, 2012 Vol.1 No.1, pp.69 - 91

Received: 08 May 2021
Accepted: 12 May 2021

Published online: 18 Mar 2012 *

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