Private Law Theory

ABSTRACT
Patent law serves an important economic function: to increase or reduce economic welfare. In the presence of economic justifications favoring creation of property rights in inventions, one needs to understand that there are also significant social costs involved. But in the present, it is not entirely clear whether the patent system has been able to create economic welfare, or what is the amount of costs associated with having such a system. Having said that, it is argued, that in the absence of a patent system, inventors would guard their inventions closely, disclosure of the inventions would come at a steep cost, and the spread of technical know-how would have been difficult. To lower transaction costs, and to sustain the utilitarian function of patent law, inventive step requirement plays a central role. Most importantly, the requirement of inventive step prevents patent races. Inventions which do not cost a lot to discover and are not really ‘uncertain’ (keeping in mind the prior art), are not deemed worthy of a patent. Hence, inventive step criteria perform the function of a ‘gatekeeper’ to keep ‘unworthy’ inventions from being patented. Whether inventive step is able to perform this function in the field of gene editing technologies like CRISPR-cas is not clear.

In this context, the research question of this dissertation is: what do the different economic theories of patent law inform us about the working of the inventive step standard in grant of patents on CRISPR technology? Is there a need to recalibrate the inventive step requirement to fit well with the existing economic theories? The dissertation also makes an attempt to make the case for a recalibrated requirement of inventive step and the disclosure requirements for the CCS patent applications. This will enable the economic theories to operate in certainty.

Naithani, Daanish, Cross-jurisdictional analysis of the standard of inventive step in patent law: Through a study of the CRISPR Cas gene editing technology in the biotechnology industry (June 5, 2022).