17 Some Observations on the Balancing of Intellectual
Property Rights with Information Freedom from the
Perspective of Constitutional Law:
In Search of Basic Principles in Law Relating toInformation Technology(*)(This English document is a translation of the summary portion of a much longer
report written in Japanese. Full details of works quoted and referenced can beobtained from the Japanese original.)
Itsuko Yamaguchi (IP Expert Overseas Research Program in FY2006)
Associate Professor, Interfaculty Initiative in Information Studies, University of Tokyo
translated by David C. Buist
Assistant Professor, Interfaculty Initiative in Information Studies, University of Tokyo
What are the implications of treating certain forms of “information” as “property” andinvesting the “owner” of that property with legally recognized “intellectual property rights”? How
can such “intellectual property rights” be grounded and theorized in legal terms? In recent times,
in Japan, laws for the protection of “intellectual property” have come to be understood as legal
instruments for the protection of “proprietary information”. This is the dominant view underlying
the current heightened consciousness of the importance of intellectual property rights in thatcountry. The concept of “information”, however, is open to numerous interpretations. It is also
something that should, in principle, remain free. In this paper, I focus on the very heart ofindustrial property rights, namely patents, looking in particular at recent debates in the United
Kingdom, with the addition of some comments, where appropriate, on the situation in the UnitedStates. Besides investigating the meaning and origins of basic concepts relating to intellectual
property and intellectual property rights, their nature, theoretical foundations and justification, I
will also consider specific issues surrounding the scope of “patentable inventions”. On the basis of
this discussion, I will conclude with some suggestions for the future of intellectual property law inJapan with a particular view to balancing intellectual property rights with the freedom of
information. I give particular emphasis to the tension between private rights and the public
interest (a tension which is inherent to the whole notion of intellectual property) and warn against
the danger of falling too easily into tautological justifications for the protection of intellectual
property rights.

I

Introduction

What are the implications of treating
certain forms of “information” as “property”
and investing the “owner” of that property
with legally recognized “intellectual property
rights”? How can such “intellectual property

rights” be grounded and theorized in legal
terms? In recent times, in Japan, laws forthe protection of “intellectual property” havecome to be understood as legal instrumentsfortheprotectionof“proprietary(*1)
information”. This is the dominant view
underlying
thecurrentheightened(*)
Published under the Industrial Property Research Promotion Project FY2007 entrusted by the Japan Patent Office.
(*1) See NOBUHIRO NAKAYAMA, MULTIMEDIA TO CHOSAKUKEN 5 (1996) [in Japanese]; see also NOBUHIRONAKAYAMA, KOGYOSHOYUKENHO (JO) TOKKYOHO 5 (2d ed., rev. 2000) [in Japanese].
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IIP Bulletin 2008148 ●

consciousnessoftheimportanceof
intellectual property rights in that country.
The concept of “information”, however, isopen to numerous interpretations(*2). It isalso something that should, in principle,
remain free(*3). This paper addresses theissue of how to reconcile “protection” with“freedom” bearing in mind the multiple
senses of the term “information”. It draws on
theauthor’s
previous
experienceof
researching issues of free expression, media
law and cyber law from the perspective ofconstitutional law. Since the signing of the
TRIPS Agreement in 1994, there has been
the rapid establishment of an institutionalframework for the effective and adequate
protection of intellectual property rights inmany countries including Japan. At the sametime, the development of a society based on
advanced information technology has given
ever greater prominence to the demand forthe free flow of information. My aim is toconsider how these two sometimes directly
opposing demands for “protection” and“freedom” might be reconciled, while also
investigating the basic principles and values
that need to be taken into account whensolving legal issues related to information
technology.
Recent events in legal history havefocusedincreasing
attentiononthetheoretical foundations for the exclusive
rights conferred by patents. This has beenaccompanied by a closely related concern
with how to balance the claims of copyrights
with the freedom of expression. In the
United States of America, for example, theSupreme Court ruled in 2003 on the Eldred v.

Ashcroft Case(*4) which had challenged theconstitutionality of the extension of the termof copyrights by the Sonny Bono CopyrightTerm Extension Act (CTEA). This has led torenewed debate about how to balance
copyright with the freedom of expression
enshrined in the First Amendment. In thesame country, there has been a remarkable
expansion in the scope of protection offered
to intellectual property rights during thepast twenty years. This has also given rise tointense debate especially since the Supreme
Court ruling on the eBay v. MercExchange
Case(*5) in 2006. Meanwhile, in the European
Union, there has been much debate about
potential conflicts between the freedom of
expression under the European Convention
on Human Rights and Fundamental
Freedoms (ECHR) and the protection of
copyrights and trade marks. In addition,
there is much concern in Europe with how toapproach patent protection in the computer
software and Internet industries, especiallyin view of the growing trend toward
open-source and free software.
In Japan, a new area of law known as“information law” (joho-ho) has developed
over the past several decades(*6). This
attempts to provide solutions to legal issues
that have arisen as a result of numerous
social changes known collectively as“informatization” (johoka) which have been
underway since the 1960s. “Information law”
crosscuts the previously existing divides
betweendifferent
areas
of
legal
specialization and seeks to provide morecomprehensive and systematic solutions to
the disparate legal issues raised by(*2) See e.g., Shunya Yoshimi (Translated by David Buist), Information , Theory, Culture & Society, Vol. 23, No. 2-3,
March-May 2006, at 271, 274-77.
(*3) See e.g., NAKAYAMA, KOGYOSHOYUKENHO (JO) TOKKYOHO, supra note 1, at 6.
(*4) See Eldred v. Ashcroft, 537 U.S. 186 (2003). See also Itsuko Yamaguchi, Hyogen no Jiyu to Chosakuken, in
CHITEKIZAISANHO NO RIRON TO GENDAITEKI KADAI [NAKAYAMA NOBUHIRO SENSEI KANREKI KINENRONBUNSHU] 365 (Hidetaka Aizawa et al. eds., 2005) [in Japanese].
(*5) See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
(*6) See e.g., JUNICHI HAMADA, JOHOHO (1993) [in Japanese]; JOHOHO NYUMON (Zenji Ishimura & Masao Horibe
eds., 1999) [in Japanese]; Junichi Hamada, Johoho , in JOHOGAKU JITEN 473 (Takashi Kitagawa et al. eds., 2002)[in Japanese]; HOSYSTEM 3 JOHOHO (Katsuya Uga & Yasuo Hasebe eds., rev. 2006) [in Japanese]. See also Itsuko
Yamaguchi, Ubiquitous Jidai ni okeru “Cyberho” Gainen no Tenkai, in TOKERU SAKAI KOERU HO 4 MEDIA TO
SEIDO113 (Daniel Foote & Yasuo Hasebe eds., 2005)[in Japanese]; Itsuko Yamaguchi (Translated by David C. Buist),
Cyberlaw, Theory, Culture & Society, Vol. 23, No. 2-3, March-May 2006, at 529; Itsuko Yamaguchi, Beyond de facto
Freedom: Digital Transformation of Free Speech Theory in Japan , 38 Stanford Journal of International Law 109(2002).
●149 ●IIP Bulletin 2008

“informatization”. Accordingly, it has been
built on the broad foundation of values
relating both to civil liberty/political freedom
and to economic freedom as laid out in theJapanese constitution. The issue of how toapproach the protection of “proprietary
information” under intellectual property law
therefore shares much of the same ground as
informationlaw
asawhole.
The
investigation of the legal protection of
information in this paper will be conductedfrom the basic understanding that thevarious institutions relating to the concept of“information” (as variously interpreted) are
all founded on the same broad set of values.
This paper is the result of a year’s
research
conducted
attheOxfordIntellectual Property Research Centre whichbegan on March 30th 2007. It draws together
ideas considered particularly important to
the formulation of future intellectual
property law in Japan. I focus on the very
heart of industrial property rights, namely
patents, looking in particular at recent
debates in the United Kingdom, with theadditionofsomecomments,
whereappropriate, on the situation in the UnitedStates. Besides investigating the meaningand origins of basic concepts relating tointellectual
property
andintellectual
property rights, their nature, theoreticalfoundations and justification, I will also
consider specific issues surrounding thescope of “patentable inventions”. On thebasis of this discussion, I will conclude withsome suggestions for the future ofintellectual property law in Japan with aparticular view to balancing intellectual
property rights with the freedom of
information. I give particular emphasis to
the tension between private rights and the
public interest (a tension which is inherent
to the whole notion of intellectual property)
and warn against the danger of falling too
easily into tautological justifications for theprotection of intellectual property rights.

II

The
Concept
of“Intellectual
Property Law”: Problems andDefinitions

Let us first consider how the term
“intellectual property” is to be defined. A
survey of recent general publications on the
topic of intellectual property law does notnecessarily reveal a very clear picture of thisissue. While there certainly are somecommon themes running through theliterature, there are also significant
differences of approach among scholars in
the field. For example, a recent British
publication, Intellectual Property by William
Cornish and David Llewelyn (first publishedin 1981 and now in its sixth edition
published in 2007) begins with an excursus
of patents, design rights, copyright and trade
marks. The authors then identify one of the
key issues emerging from the recent
expansion in the scope of intellectual
property (IP) protection as follows: “Theultimate art in shaping of IP policy lies insecuring outcomes that are proportionate to
the aim of that protection.” (*7) For them, thepoint of intellectual property is that it“protects
applications
of
ideas
and
information that are of commercial value” (*8).
They
note
furthermore
that“[o]necharacteristic shared by all types of IPR” isthat “they are essentially negative: they arerights to stop others doing certain things” (*9).
In particular, the “core conception” ofpatents is “to prevent all others ― not justimitators, but even independent devisers of
the same idea ― from using the invention forthe duration of the patent” (*10). Patents are
not freely available for every single
industrial improvement “but only for what isjudged to qualify as a ‘patentable invention’by comparison with what is already known
in an industry” (*11). However, there are(*7)

WILLIAM CORNISH & DAVID LLEWELYN, INTELLECTUAL PROPERTY: PATENTS, COPYRIGHT, TRADEMARKS AND ALLIED RIGHTS 3 (6th ed. 2007).
(*8) Id. at 6.
(*9) Id.
(*10) Id. at 7.
(*11) Id. at 8.
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IIP Bulletin 2008150 ●

significant problems in defining exactly whatfalls within the scope of a “patentable
invention” (as is explained in more detail in
Chapter 6 of the full Japanese version of thisreport).
A different approach is offered by Lionel
Bently and Brad Sherman in a general workon intellectual propriety published (in its
second edition) in 2004. This pays particularattention to the historical significance of“creativity”, as is illustrated in the following
quotation:“Intellectual
propertylaw
regulates the creation, use, and exploitationof mental or creative labour” (*12). It is
explained that the term “intellectual
property” has been used for almost one
hundred and fifty years in reference to thegeneral area of law that includes such things
as copyright, patents, designs and trade
marks(*13). In a separate work, the sameauthors state explicitly that the modern
concept of intellectual property law “did not
emerge as a discrete and widely recognised
category of law until midway through thenineteenth century” (*14).
A more critical approach to the issues ofintellectual property is offered by Michael
Spence in a book first published in 2007.
This opens with the following statement:“The term ‘intellectual property’ is ofnineteenth-century coinage” (*15). It then goeson to say that if an intellectual property
lawyer were asked to describe her/his subject,
the answer would consist of a “list of legal
regimes” such as the law of copyright,
patents and trade mark, rather than a single“concept giving them coherence”. Even if
she/he were able to give a detailed
description of each of these separate areas oflaw, “the enquirer might be left with little

notion of what, if anything, holds these legal
regimes together” (*16). The main point of
Spence’s argument is to insist on the need“to examine both the concept of intellectual
property and the reasons why a legal system
might incorporate such a concept” regardlessof any reluctance to do so among lawyers
practicing in the field(*17). With this concern
in mind, Spence embarks on his own attempt
to clarify the “core concept of an intellectual
property right” (*18).
As these general works illustrate, it is
not necessarily easy to identify the basis forgrouping together a number of different legal
areas into the category of “intellectual
property law”. While it is possible to put
one’s finger on some common elements,
further investigation is required in order toreveal the significance and origins of theconcepts of “intellectual property” and“intellectual property rights”. In the next
section, I pursue this matter while including
in my investigation the opinions of scholars
in the United States, whose legal system has
inherited the British common law tradition.

III Tensions Inherent in the Very
Origins of “Intellectual Property”
One way of clarifying the meaning andfunction of a concept is to look at its origins.
As has already been mentioned in reference
to the works of Bently and Sherman, theorigins of intellectual property are closely
related to the origins of modernity itself.
This theme has been developed further by
Carla Hesse who notes that the “concept ofintellectual property ― the idea that an idea
can be owned ― is a child of the European
Enlightenment” (*19). It was at this time that(*12) See LIONEL BENTLY & BRAD SHERMAN, INTELLECTUAL PROPERTY LAW 1-2 (2d ed. 2004).
(*13) Id. at 1.
(*14) See BRAD SHERMAN & LIONEL BENTLY, THE MAKING OF MODERN INTELLECTUAL PROPERTY LAW 95(1999).
(*15) MICHAEL SPENCE, INTELLECTUAL PROPERTY 1 (2007).
(*16) Id.
(*17) Id. at 1-2.
(*18) Id. at 12-35.
(*19) Carla Hesse, The Rise of Intellectual Property, 700 B.C. ― A.D. 2000: An Idea in the Balance , Daedalus 26 (Spring2002), reprinted in INTELLECTUAL PROPERTY RIGHTS: CRITICAL CONCEPTS IN LAW, Volume I, 51 (David
Vaver ed., 2006), at 51. This five-volume set is useful, and thus its reprinted articles will be cited in my paper by
the page number of each volume.
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human beings came to believe that“knowledge” was a product of the “humanmind working upon the senses” rather thanbeing simply transmitted to humans through“divine revelation”, assisted by the study ofancient texts. For the first time, people cameto see themselves as the creators of “newideas” rather than as “mere transmitters ofeternal verities”. As a result, it also became
possible for them to imagine themselves tobe the “owners” of ideas(*20). This was anintegral part of the development of modern
thought as it explored the significance ofhuman existence in opposition to theabsolute existence of God. On the basis of
this insight, Hesse takes copyright to be “thecore of the modern concept of intellectual
property” (*21). My emphasis here, however, is
not on the historical development of
copyright, but rather on the “philosophicaltensions” that existed in “the balance
between private rights and the public
interest” (*22) right from the very beginningsof the modern concept of intellectual
property.
As Hesse points out, “a rethinking of thebasis and purpose of knowledge” (*23) occurredin Europe during the mid-eighteenth century,at a time when revolutionary changes weretaking place in the institutions of printing
and publishing. As a result of debate about
the “origins and nature of ideas … a series ofphilosophical
(or,
more
specifically,
epistemological) problems were shown to lie
at the heart of what at first glance seemed
merely to be questions of commercial
policy”(*24). In simple terms, the main point ofcontention was between two philosophicaldoctrines ― “subjectivism” and “objectivism”― from which two different traditions of legal
interpretation emerged with respect to theconcept of intellectual property(*25). The
empiricist perspective of the objectivist camp
saw the “public good” of or “public interest”
inencouraging
theproduction
andtransmission of new ideas as the highest aimof the law. This led eventually to theadoptionofautilitarian
approach.
Meanwhile, those who took the subjectivist
position saw upholding “natural right” as theultimate aim and believed that the guiding
principle of legislation should be “thesanctity of the individual creator” (*26). The
opposition between these two different
approaches can be traced up to the presentday.
The patent system inaugurated in
Venice in 1474 is generally recognized as
being the first patent-related statute everenacted(*27). It is highly significant that thetension between private rights and the
public interest existed even at this earlystage. According to Christopher May, theVenetian legislators of that time “had adeveloped and practical view” of the balance
between public and private benefits arisingfrom the ownership of knowledge, which was
linked to “the need to support innovation”(*28).
He goes on to state the following: “Thebalance between private rights to reward
and the public good of dissemination of
innovation has been crucial to the law ofintellectual property and its legitimisation
ever since.” (*29)(*20) Hesse, supra note 19, at 51.
(*21) Id.
(*22) Id. at 64.
(*23) Id. at 57.
(*24) Id. at 57-58.
(*25) See id. at 61.
(*26) Id.
(*27) See, e.g., Frank .D. Prager, A History of Intellectual Property from 1545 to 1787 , 26 Journal of the Patent OfficeSociety 711 (1944); Giulio Mandich, Venetian Patents (1450-1550) , 30 Journal of the Patent Office Society 166 (F.D.
Prager trans., 1948); F. D. Prager, The Early Growth and Influence of Intellectual Property, 34 Journal of the
Patent Office Society 106 (1952); see also Edward C. Walterscheid, The Early Evolution of the United States Patent
Law: Antecedents (Part 1), 76 Journal of the Patent and Trademark Office Society 697, 705-06 (1994); DONALD S.
CHISUM ET AL., PRINCIPLES OF PATENT LAW 10-11 (3d ed. 2004); ROBERT P. MERGES ET AL.,INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE 106 (3d ed. 2003).
(*28) Christopher May, The Venetian Movement: New Technologies, Legal Innovation and the Institutional Origins ofIntellectual Property, 20 Prometheus 159 (2002), reprinted in INTELLECTUAL PROPERTY RIGHTS: CRITICAL
CONCEPTS IN LAW, Volume III, 7 (David Vaver ed., 2006), at 12.
(*29) Id.
●

IIP Bulletin 2008152 ●I have only been able to cover a smallpart of the existing debate on the origins ofintellectual property. It should be clear,nevertheless, that the concept of intellectual
property contained from its very beginning atension between private rights and the
public interest or public good. Reconcilingthese two demands was seen as an importanttask from the earliest stages of thedevelopment of intellectual property law.
Next, I will consider in more detail thecontemporary debate about the essence ofintellectual property, focusing particularly
on commentary about current patent law in
the United Kingdom.

IV ThePositionof“Intellectual
Property” in Relation to the
Framework of General Property
Law
Let us consider the nature of intellectual
property according to current English law.
The first point to note is that patents,
copyright and trade marks are all defined as
being “personal property”. Section 30(1) of
the Patents Act 1977 (1977 c.37) states asfollows: “Any patent or application for apatent is personal property (without being athing in action)”. What exactly does thismean? In particular, what does it mean to
say that a patent is not a “thing in action”?
The legal definition of “property”, asgiven for example by A Dictionary of Law
published by Oxford University Press is“[a]nything that can be owned” (*30). Property
is then divided into subcategories. It can be
defined as either “real property” or “personal
property”. Furthermore, it can be divided into“tangible property” and “intangible property”.
Intellectual property is categorized as being“personal” as opposed to “real” property, andas “intangible” as opposed to “tangible”
property(*31).
According to one general text on property
law, Personal Property Law by Michael
Bridge, personal property is defined asfollows: “It is a commonplace observation that
personal property (or personalty) is all theproperty that is left once land, that is real
property (or realty), has been subtracted” (*32).
As this definition clearly indicates, thecategory of “personal property” is residualand expandable in nature(*33). In addition, it isevident that the category of “things in action”(to which many items of intellectual property
belong) is an even more residual category
within that of “personal property” (*34).
F.H. Lawson and Bernard Rudden, in
their book The Law of Property, explain that“things in action” is “[t]he most general namewhich the common law gives to the class ofintangibles”(*35). They note furthermore that it
was “coined to convey two notions”. On the
one hand, by employing the word “thing” it“catches the idea that, whatever it is, it is anasset”, while on the other hand, the term “inaction” implies that “this asset is not tangible
and can be transformed into a tangible object
only (if at all) by successfully suing someone”(*36).
According to the commentary on the
aforementioned Section 30(1) of the Patents
Act 1977 in Halsbury’s Laws of England,
patents had once been defined as “things inaction”, but this long established position atcommon law was reversed by the Patents Act
1977(*37). As of 1st June 1978, all existing andnew patents, and all patent applications,acquired the status of not being “things inaction”(*38).
Copyrights,
however,have
continued to be “things in action” to the(*30) A DICTIONARY OF LAW 419 (Elizabeth A. Martin & Jonathan Law eds., 6th. ed. 2006). .

(*31) See id. at 280, 419.
(*32) MICHAEL BRIDGE, PERSONAL PROPERTY LAW 1 (3d ed. 2002).
(*33) See id.
(*34) Id. at 4-5.
(*35) F.H. LAWSON & BERNARD RUDDEN, THE LAW OF PROPERTY 29 (3d ed. 2002).
(*36) Id.
(*37) LORD HAILSHAM OF ST. MARYLEBONE, HALSBURY’S LAWS OF ENGLAND, Vol. 35 (4th ed., reissue, 1994) at
150-51,152 n.15.
(*38) Id. See also id. at 220 n.6.

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IIP Bulletin 2008

present day(*39). As to the reasons for thispeculiar status of patents, Cornish andLlewelyn make the following observations:“A patent is a right of personal property; so
is an application” (*40), and “[t]hey are not
however, things in action; though why not, isa mystery” (*41).
In a work called Property and Justice,
J.W. Harris provides some clues as to thereasons for the peculiar status of patents incontemporary English law. In reference tothe diverse applications of the term
“property” in the present day, he poses thefollowing question: “Is there anything, could
there be anything, which constitutes anessence of propertiness underlying all theseuses?” (*42) Harris points out the need tounderstandthenatureofproperty
institutions, to identify their “essentials” andtypical “features”, in order to investigate
how those institutions are justified and toclarifysomeparticularquestionsofinstitutional design and concrete questionsof resource-allocation(*43). According to Harris,“the essentials of a property institution are
the twin notions of trespassory rules and theownership spectrum” (*44). For an item to bebrought within a property institution, it
must be subjected to “trespassory” protection
and be the subject of “an ownership interest”(*45) .
Furthermore, it must normally be“scarce” (*46). Ideas, however, do not fulfil thiscondition of scarcity, since “as a totality”
ideas are “potentially infinite” (*47). Ideational
entities only become the subject of ownershipinterests as a result of the establishment oflaws relating to patents, copyrights andother forms of intellectual property. As
Harris says, in the absence of any natural
scarcity, “in the case of those ideational

entities which are comprised within
intellectual property, the law creates
artificial scarcity” (*48). This raises a question
about why the term “property” is applied tosuch entities at all. In the next section, I willconsider the justifications for the recognitionof certain ideas as “intellectual property”.

V

Issues relating to the Justificationof “Intellectual Property”

Debate about the theoretical grounding
and justification of “intellectual property”
has been particularly extensive in the
United States, especially since the recent
expansion in the scope of intellectual
property protections in that country. There
has also been a remarkable increase inconcern for this topic in the United Kingdom,
where much of the discussion makes explicit
reference to the debate in the United States.
Some of the debate in both countries has
been directly critical of recent trends in thedevelopment of intellectual property rights.
As noted, for example, in the aforementioned
work by Bently and Sherman, “there are now
many commentators who doubt that all
intellectual property rights are justified in
the form they currently take” (*49). Since ideas
and information are not naturally scarce andcan be shared, the justification for the
granting of exclusive rights to them has
become a subject for intensive debate, evenmore so now than previously. Attempts tojustify such rights have tended to focus on
one of two types of argument: “ethical andmoral
arguments”
and“instrumental
justifications” (*50). What is interesting about
the recent debate is that it tends to employ
the latter type of argument. In other words,(*39) See LORD MACKAY OF CLASHFERN, HALSBURY’S LAWS OF ENGLAND, Vol. 6 (4th ed., reissue, 2003) at 6.
(*40) CORNISH & LLEWELYN, supra note 7, at 279.
(*41) Id. at 279 n.55.
(*42) J.W. HARRIS, PROPERTY AND JUSTICE 7 (1996).
(*43) See id. at 4.
(*44) Id. at 5.
(*45) Id. at 42.
(*46) Id. at 42-43.
(*47) Id. at 43.
(*48) Id.
(*49) See BENTLY & SHERMAN, supra note 12, at 3-5(*50) See id. at 4-5.
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it emphasizes “the fact that intellectual
property induces or encourages desirable
activities” (*51).
One of the primary sources cited by
Bently and Sherman for an overview of“instrumental justifications” for intellectual
property in the United States is a 1989
paper
by
Edwin
Hettinger
entitled(*52) .
“Justifying
Intellectual
Property”
Reading this paper, it becomes clear that
there was already a clear awareness of theimportance of establishing arguments for the
existence of intellectual property in the faceof widespread doubt about its justifiability.
Two main sources of such doubt are
identified(*53). Firstly, intellectual objects are
not exclusive by nature. This raises thequestion of why something that is capable ofbeing possessed and used by everyone
concurrently should become the subject of
exclusive rights granting possession and use
to only one person. Hettinger notes that theburden of justification lies with “those who
would restrict the maximal use of
intellectual objects” (*54). He continues to
identify a second source of doubt about thejustifiability of intellectual property: “Thefundamental value our society places on
freedom of thought and expression createsanother difficulty for the justification of
intellectual property.” (*55) This is to say thatprivate property has the effect of increasing
one person’s freedom at the expense of
everyone else’s. Private intellectual property,
such as trade secrets, restricts the mannerin which ideas can be obtained, and (in thecase of patents) limits the use of ideas, or (inthe case of copyrights) limits the expressionof ideas. As Hettinger clearly states, such
restrictions are “undesirable for a number ofreasons” (*56). This second area of doubt about
the justifiability of intellectual property

presents especially serious challenges, themore so in a society that places great valueon the freedom of thought and expression.
Variousarguments
justifying
theexistence of intellectual property have been
put forward. I will focus here on two
particulararguments
representing
respectively the two types of arguments
identified by Bently and Sherman. The
category of “ethical and moral arguments” isrepresented by the “labour” argument, while“instrumental justifications” are represented
by the “utilitarian” argument(*57).
There are two main ways of arguing thatpeople should be granted property rights
based on their own labour: (1) that people
are “naturally entitled” to the fruits of theirlabour, and (2) that they “deserve” suchrights(*58). In both cases, justifications ofintellectual property based on the “labour”
argument have a strong foundation at thelevel of intuition. However, justifying aparticular decision on a specific means or
degree of protection inevitably involves
complex arguments that stray deeply into
the territory of value judgements, such as
how to measure the structural elements ofvalue arising from the process of intellectual
creation, what kinds of action deserve thegranting of intellectual property rights, andhow the proportionality of rewards for acts ofcreation can be maintained.
Turning now to utilitarian arguments,
Hettinger gives particular prominence to theway such arguments focus on the users,
rather than producers, of intellectual
products(*59). In other words, the granting ofintellectual property rights to producers isjustified as a necessary means to allow users
sufficient access to intellectual products. As
Hettinger notes, this approach to thejustification of intellectual property is(*51) Id. at 4.
(*52) See id. at 4 n.14; Edwin C. Hettinger, Justifying Intellectual Property , 18 Philosophy & Public Affairs 31 (1989),
reprinted in INTELLECTUAL PROPERTY RIGHTS: CRITICAL CONCEPTS IN LAW, Volume I, 97, supra note 19.
(*53) Hettinger, supra note 52, at 99-100,110.
(*54) Id. at 99.
(*55) Id. at 100.
(*56) Id.
(*57) See BENTLY & SHERMAN, supra note 12, at 4-5; Hettinger, supra note 52, at 100-11.
(*58) See Hettinger, supra note 52, at 100-05.
(*59) Id. at 108.
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“paradoxical”(*60). The current availability
and use of intellectual products is restricted
for the purpose of increasing the productionof new intellectual products and promoting
the future availability and use of suchproducts(*61).
Thisargument
depends
crucially on the question of whether
copyrights, patents and trade secrets
increase the availability and use of
intellectual products more than they restrict
them, and furthermore on the issue of
whether such an increase is greater thanwould be achieved by “any alternative
mechanism.”(*62) Hettinger argues for theneedtoconsidersuch“alternative”
mechanisms, including amendments to theexisting system, such as shortening thelength of copyright and patent grants (*63).
This points to the fact that utilitarianarguments for intellectual property require“substantial empirical evidence” in order tobe justified(*64). Such evidence is hard to form,
rendering the argument far more complex
than initially seemed(*65). Economic analysis
related to the justification of intellectual
property bears this out(*66).

VI British Patent Law in the Context
of European Harmonization (withparticular reference to the issue ofthe scope of patentable inventions)
So far I have dealt mainly with
fundamental concepts, principles and values
relatedtointellectual
property
andintellectual property rights. Building on thisgeneral discussion, I would now like toconsider the more specific issue of how theconcept of “invention” is denoted in British
patent law. This is to emphasize theparticular importance of patents among thevarious different areas of intellectual
property law(*67). As an entry point into thebroader question of what criteria should beapplied in the definition of an “invention”, I
will look at the case of the new technology ofcomputer programmes, which has developed
into a significant area of controversy inEurope, especially in the United Kingdom.
One interesting aspect of the history ofpatent law in the United Kingdom is that thephrase “any manner of new manufacture”,
first used in Section 6 of the Statute ofMonopolies of 1624(*68), had been a constantfeature of British patent law until theenactment of the current Patents Act
1977(*69). It was even used in the immediately
preceding Patents Act 1949. The 1977 Act,however, implemented various measures inaccordance with the European Patent
Convention 1973 and the Patent Cooperation
Treaty 1970. In the words of Cornish andLlewelyn, this caused the British patent
system to receive “the largest culture shock
in its history” (*70). In place of the establisheddefinition of “invention” inherited from the
Statute of Monopolies, a new definition inaccordance with the European Patent
Convention was enforced under the 1977 Act.
The harmonization of both substantive
and procedural law in Europe has given rise
to major issues in a number of areas. Patentlaw is no exception. For example, David
Vaver points out a general tendency toward a(*60) Id.
(*61) Id.
(*62) Id. at 109.
(*63) Id.
(*64) See id. at 109-10.
(*65) Id. at 110.
(*66) See, e.g., EDITH TILTON PENROSE, THE ECONOMICS OF THE INTERNATIONAL PATENT SYSTEM 34-35, 39(1951); Richard A. Posner, The Law and Economics of Intellectual Property, Daedalus 5 (Spring 2002), reprinted in
INTELLECTUAL PROPERTY RIGHTS: CRITICAL CONCEPTS IN LAW, Volume I, 157, supra note 19, at 164-65.
(*67) See e.g., CORNISH & LLEWELYN, supra note 7, at 7-8.
(*68) See Statute of Monopolies 1623 (c.3), http://www.statutelaw.gov.uk/ (Ministry of Justice, The UK Statute Law
Database, last visited Jan. 27, 2008).
(*69) See e.g., UK Intellectual Property Office, Manual of Patent Practice, Patents Act 1977 - Sections 1 to 132, Part 1:
New domestic law, Patentability, 1. Patentable inventions (October 2007), Section 1, at 1.01,
http://www.ipo.gov.uk/practice-sec-001.pdf (last visited Jan. 27, 2008); CORNISH & LLEWELYN, supra note 7, at
214.
(*70) CORNISH & LLEWELYN, supra note 7, at 113.
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broadening of the interpretation of what ispatentable and a narrowing of what is notpatentable(*71). He notes the particularprevalence of this tendency in European
patent law and is critical of the trend ininterpretations of the scope of patentable
invention under Articles 52 and 53 of theEuropean Patent Convention(*72).
One particularly remarkable case is that
which
led
to
the
Aerotel/Macrossan
Judgment by the Court of Appeal of Englandand Wales on 27th October 2006 (Aerotel Ltdv Telco Holdings Ltd; Macrossant’s Patent
Application (No. 0314469.9), [2006] EWCA
Civ 1371; [2007] RPC (7) 117).
This
suggests that decisions by the European
Patent Office do not necessarily receive
immediate
complianceasregards
interpretation of Article 52 of the European
Patent Convention on the demarcation of thescope of patentable invention. Although
Article 52(2) provides a non-exhaustive listof matters which are not to be regarded as
inventions, doubt has arisen as to whether
there is anything in common among thematters listed, or, in the words of theabovementioned judgement, “there is noevident underlying purpose lying behind theprovisions as a group ― a purpose to guidethe construction.” (*73) The Court of Appeal
notes that Article 52(2) differs from Article
53 (whose exceptions have been interpreted
restrictively) and then it formulated its own
four-step approach to determine thepatentability of an invention(*74).

VII In Place of a Conclusion: How to
StrikeaBalancebetweenIntellectual Property Rights andthe Free Flow of Information
In conclusion I would like to return tothe question of how to define “intellectual

property”, which was posed at the beginningof Section 2. In the words of Vaver,intellectual property law “starts from thepremise that ideas are free as the air ― acommon resource for all to use as they can
and wish” (*75). Paradoxically, however, it“then proceeds systematically to underminethat premise” (*76). The history of British
patent law, in which the “issuing patents”
was viewed as “the exception, not therule”(*77), should be seen in the light of thisfundamental contradiction. The process ofdelimiting the scope of “exclusions” frompatentability involves the search for somekind of principle for making further
exceptions to what is already an exception.
This has proven to be an inherently difficult
task, especially in the United Kingdom,
where a well established framework basedon the Statute of Monopolies has had to bealtered in accordance with the trend towards
international harmonization.
Finally, I would like to note two
important points that need to be born inmind when seeking to strike a balance
between intellectual property rights and thefree flow of information.
Firstly, the intellectual property system
has the fundamental purpose of promoting
the public interest and public good throughthe granting of private rights to intellectual
property. However, as my account of theorigins of intellectual property and thehistory of changes in the concept of“invention” has shown, there has always
been an inherently tense relationshipbetween these private rights and the public
interest. In addition, the attempt to balance
this relationship has sometimes involved
radical changes to the system in order toadapt to the demands of the time and to suitthe particular circumstances of the issues
and contexts of application.

(*71) David Vaver, Intellectual Property: The State of the Art , 116 Law Quarterly Review 621 (2000), reprinted in
INTELLECTUAL PROPERTY RIGHTS: CRITICAL CONCEPTS IN LAW, Volume I, 33, supra note 19, at 44.
(*72) See id. at 44-46.
(*73) Aerotel , [2007] RPC (7) 117, at 126.
(*74) Id. at 127-28, 134-35.
(*75) David Vaver, General Introduction, INTELLECTUAL PROPERTY RIGHTS: CRITICAL CONCEPTS IN LAW, Volume
I, supra note 19, at 1.
(*76) Id.
(*77) Id.
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157 ●IIP Bulletin 2008

Secondly, as my investigation of debates
about the essence and justification of
intellectual property has demonstrated,
great care must be taken to avoid falling into
tautology when discussing the “value” and“propertiness”
ofincorporeal
entities.
Justifications
fortheprotectionofintellectual property rights frequently resort
to the argument that any incorporeal entitywith “value” constitutes a form of “property”
and therefore must receive protection as“intellectual property”. However, as alreadypointed out by Legal Realists in the UnitedStates in the 1930s, the economic value of anincorporeal entity is dependent on the extent
to which it is legally protected(*78). The
limitations of such justifications therefore
require renewed attention, especially at atime when the sphere of intellectual property
protection is undergoing such remarkable
expansion.
I end by mentioning a few outstanding
issues that relate to the fundamental
questions posed at the very outset of thisreport. Firstly, we must be aware of the evergrowing significance of the granting ofproperty
protection
toinformation,
notwithstanding
thediversityofitsmeanings, in a society influenced by anincessantly
developing
information
technology. In particular, we must pay
attention to the existence of major problems
in the justification of intellectual property
and the very peculiar status of intellectual
property within the broader framework ofgeneral property law, especially considering
the view that information should in principle
be allowed to flow freely. A fully andcoherently developed “theoretical system” forthe legal protection of information asproperty has yet to be formed. Developingsuchasystem
without
seriouslycompromising the freedom of information
will involve complex value judgements andmuch debate. This is a task to be shared not
only by intellectual property law, but also by

information law in general.

(*78) See, e.g. , Felix S. Cohen, Transcendental Nonsense and the Functional Approach, 35 Columbia Law Review 809,
814-15 (1935); William W. Fisher III, The Growth of Intellectual Property, Eigentum im internationalen Vergleich
265 (1999), reprinted in INTELLECTUAL PROPERTY RIGHTS: CRITICAL CONCEPTS IN LAW, Volume I, 72,
supra note 19, at 84-86.

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