5.02.2008

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Malignant narcissism - Wikipedia, the free encyclopedia

Malignant narcissism

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This article is about Kernberg's theory. For the instrumental song by Rush, see Malignant Narcissism (song).

Otto Kernberg described malignant narcissism as a syndrome characterized by a narcissistic personality disorder (NPD), antisocial features, paranoid traits, and ego-syntonic aggression. Other symptoms may include an absence of conscience, a psychological need for power, and a sense of importance (grandiosity). Pollock wrote: "The malignant narcissist is presented as pathologically grandiose, lacking in conscience and behavioral regulation with characteristic demonstrations of joyful cruelty and sadism."[1] Kernberg claimed that malignant narcissism should be considered part of a spectrum of pathological narcissism, which he saw as ranging from the Cleckley's antisocial character (today's psychopath) at the high end of severity, to malignant narcissism, to NPD at the low end.[2]

Kernberg wrote that malignant narcissism can be differentiated from psychopathy because of the malignant narcissists' capacity to internalize "both aggressive and idealized superego precursors, leading to the idealization of the aggressive, sadistic features of the pathological grandiose self of these patients." According to Kernberg, the psychopaths' paranoid stance against external influences makes them unwilling to internalize even the values of the "aggressor," while malignant narcissists "have the capacity to admire powerful people, and can depend on sadistic and powerful but reliable parental images." Malignant narcissists, in contrast to psychopaths, are also said to be capable of developing "some identification with other powerful idealized figures as part of a cohesive 'gang' ... which permits at least some loyalty and good object relations to be internalized."

Malignant narcissism is highlighted as a key area when it comes to the study of mass, sexual, and serial murder.[3][4][citation needed]

[edit] See also

[edit] External links

[edit] References

  1. ^ Pollock, G. H. (1978), Process and affect, International Journal of Psycho-Analysis, 59, 255–276.
  2. ^ Kernberg, O. F. (1994), The Psychotherapeutic Management of Psychopathic, Narcissistic, and Paranoid Transferences.
  3. ^ Gerberth, V., & Turco, R. (1997) Antisocial personality disorder, sexual sadism, malignant narcissism, and serial murder. Journal of Forensic Sciences, 42, 49-60.
  4. ^ ^ Turco, R. (2001) Child serial murder-psychodynamics: closely watched shadows, Journal of The American Academy of Psychoanalysis, 29(2), 331–338.
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Narcissistic personality disorder - Wikipedia, the free encyclopedia

Narcissistic personality disorder

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Narcissistic personality disorder (NPD), is a personality disorder defined by the Diagnostic and Statistical Manual of Mental Disorders (DSM IV-R), the diagnostic classification system used in the United States, as "a pervasive pattern of grandiosity, need for admiration, and a lack of empathy."[1]

Contents

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[edit] Classification

DSM-IV divides personality disorders into three clusters based on symptom similarities.[1] This clustering categorizes the Narcissistic personality disorder as a cluster B personality disorder, those personality disorders having in common an excessive sense of self importance. Also in that cluster are the Borderline personality disorder, the Histrionic personality disorder and the Antisocial personality disorder.

The ICD-10 (International Classification of Mental and Behavioural Disorders, published by the World Health Organisation in Geneva 1992) regards narcissistic personality disorder (NPD) as "a personality disorder that fits none of the specific rubrics". It relegates it to the category known as "Other specific personality disorders", which also includes the eccentric, "haltlose", immature, passive-aggressive, and psychoneurotic personality disorders.

[edit] DSM Criteria

A pervasive pattern of grandiosity (in fantasy or behavior), need for admiration, and lack of empathy, beginning by early adulthood and present in a variety of contexts, as indicated by five (or more) of the following:[1]

  1. has a grandiose sense of self-importance
  2. is preoccupied with fantasies of unlimited success, power, brilliance, beauty, or ideal love
  3. believes that he or she is "special" and unique
  4. requires excessive admiration
  5. has a sense of entitlement
  6. is interpersonally exploitative
  7. lacks empathy
  8. is often envious of others or believes others are envious of him or her
  9. shows arrogant, haughty behaviors or attitudes

[edit] ICD-10 Criteria

While the ICD-10 does not specifically define the characteristics of this personality disorder, it is classified in the category "Other Specific Personality Disorders".

ICD-10 states that Narcissistic Personality Disorder is "a personality disorder that fits none of the specific rubrics F60.0-F60.7". That is, this personality disorder does not meet the diagnostic criteria for any of the following:

[edit] Epidemiology

Lifetime prevalence is estimated at 1% in the general population and 2% to 16% in clinical populations. 50 to 75% of those with this diagnosis are men.Template:Source: APA, DSM IV-TR 2000

[edit] Hypothetical causes

The etiology of this disorder is unknown according to Groopman and Cooper. However, they list the following factors identified by various researchers as possible factors.[2]

  • An oversensitive temperament at birth
  • Overindulgence and overvaluation by parents
  • Valued by parents as a means to regulate their own self-esteem
  • Excessive admiration that is never balanced with realistic feedback
  • Unpredictable or unreliable caregiving from parents
  • Severe emotional abuse in childhood
  • Being praised for perceived exceptional looks or talents by adults
  • Learning manipulative behaviors from parents

Some narcissistic traits are common and a normal developmental phase. When these traits are compounded by a failure of the interpersonal environment and continue into adulthood they may intensify to the point where NPD is diagnosed.[citation needed] It has been suggested[who?] that NPD may be exacerbated by the onset of aging and the physical, mental, and occupational restrictions it imposes as can most personality traits.[3][dubious – discuss]

[edit] Various clinical views

 This article needs additional citations for verification.
Please help improve this article by adding reliable references. Unsourced material may be challenged and removed. (February 2008)

Pathological narcissism occurs in a spectrum of severity. In its more extreme forms, it is narcissistic personality disorder. NPD is considered to result from a person's belief that he or she is flawed in a way that makes the person fundamentally unacceptable to others [4]. This belief is held below the person's conscious awareness; such a person would typically deny thinking such a thing, if questioned. In order to protect themselves against the intolerably painful rejection and isolation that (they imagine) would follow if others recognised their supposedly defective nature, such people make strong attempts to control others' view of them and behaviour towards them.

Psychologists commonly believe[weasel words] that pathological narcissism results from an impairment in the quality of the person's relationship with their primary caregivers, usually their parents, in that the parents were unable to form a healthy, empathic attachment to them.[citation needed] This results in the child conceiving of themselves as unimportant and unconnected to others. The child typically comes to believe that he or she has some defect of personality which makes them unvalued and unwanted [5].

Narcissistic Personality Disorder (NPD) is isolating, disenfranchising, painful, and formidable for those diagnosed with it and often those who are in a relationship with them. Distinctions need to be made among those who have NPD because not each and every person with NPD is the same. Even with similar core issues, the way in which one's individual narcissism manifests itself in his or her relationships varies.[citation needed]

To the extent that people are pathologically narcissistic, they can be controlling, blaming, self-absorbed, intolerant of others' views, unaware of others' needs and of the effects of their behavior on others, and insistent that others see them as they wish to be seen [3]. They may also demand certain behavior from their children because they see the children as extensions of themselves, and need the children to represent them in the world in ways that meet the parents' emotional needs [6]. (For example, a narcissistic father who was a lawyer demanded that his son, who had always been treated as the "favorite" in the family, enter the legal profession as well. When the son chose another career, the father rejected and disparaged him.)

These traits will lead overly narcissistic parents to be very intrusive in some ways, and entirely neglectful in others. The children are punished if they do not respond adequately to the parents' needs. This punishment may take a variety of forms, including physical abuse, angry outbursts, blame, attempts to instill guilt, emotional withdrawal, and criticism. Whatever form it takes, the purpose of the punishment is to enforce compliance with the parents' narcissistic needs[6].

People who are overly narcissistic commonly feel rejected, humiliated and threatened when criticised. To protect themselves from these dangers, they often react with disdain, rage, and/or defiance to any slight criticism, real or imagined [7]. To avoid such situations, some narcissistic people withdraw socially and may feign modesty or humility.

Though individuals with NPD are often ambitious and capable, the inability to tolerate setbacks, disagreements or criticism, along with lack of empathy, make it difficult for such individuals to work cooperatively with others or to maintain long-term professional achievements [8]. With narcissistic personality disorder, the person's perceived fantastic grandiosity, often coupled with a hypomanic mood, is typically not commensurate with his or her real accomplishments.

The exploitativeness, sense of entitlement, lack of empathy, disregard for others, and constant need for attention inherent in NPD adversely affect interpersonal relationships.

[edit] Theories on Narcissistic personality disorder and shame

 This section needs additional citations for verification.
Please help improve this article by adding reliable references. Unsourced material may be challenged and removed. (February 2008)

It has been suggested that Narcissistic personality disorder may be related to defenses against shame. [9]

Gabbard suggested NPD could be broken down into two subtypes[10]. He saw the "oblivious" subtype as being grandiose, arrogant and thick skinned and the "hypervigilant" subtype as easily hurt, oversensitive and ashamed.

He suggested that the oblivious subtype presents a large, powerful, grandiose self to be admired, envied and appreciated, which is the antithesis of the weakened and internalised self that hides in a generic state of shame, in order to fend off devaluation, whereas the hypervigilant subtype, far from fending off devaluation, is obsessed with it, neutralising devaluation by seeing others as unjust abusers.

Jeffrey Young, who coined the term "Schema Therapy", a technique originally developed by Aaron T. Beck (1979), also links shame to NPD. He sees the so-called Defectiveness Schema as a core schema of NPD, next to the Emotional Deprivation and Entitlement Schemas. [11]. The Defectiveness Schema is compensated with three Schema Modes (coping strategies):

  • Surrender: Choose critical partners and significant others; puts him- or herself down.
  • Avoidance: Avoids sharing "shameful" thoughts and feelings with partners and significant others due to fear of rejection.
  • Overcompensation: Behaves in a critical or superior way toward others; tries to come across as perfect.

Note that an individual with this schema might not employ all three schema modes.

[edit] Treatment and prognosis

Most psychiatrists and psychologists regard NPD as a relatively stable condition when experienced as a primary disorder [6]. James F. Masterson's outlines a prominent approach to healing NPD, while [5] discusses a continuum of severity and the kinds of therapy most effective in different cases. Typically, as narcissism is an ingrained personality trait, rather than a chemical imbalance, medication and therapy are not very effective in treating the disorder. Schema Therapy, a form of therapy developed by Jeffrey E. Young that integrates several therapeutic approaches (psychodynamic, cognitive, behavioral etc.), also offers an approach for the treatment of NPD. [12]

It is unusual for people to seek therapy for NPD. Subconscious fears of exposure or inadequacy are often met with defensive disdain of therapeutic processes [13], [14]

Pharmacotherapy is rarely used. In a review of the literature, one patient responded to Wellbutrin.[1]

[edit] See also

[edit] Footnotes

  1. ^ a b c DSM IV-TR, Diagnostic criteria for 301.81 Narcissistic Personality Disorder
  2. ^ Narcissistic Personality Disorder. Personality Disorders - Narcissistic Personality Disorder. Armenian Medical Network (2006). Retrieved on 2007-02-14.
  3. ^ a b full list in DSM-IV-TR, p. 717
  4. ^ Golomb, Elan PhD (1992). Trapped in the Mirror. New York: Morrow, pages 19-20
  5. ^ a b Johnson, Stephen M PhD (1987). Humanizing the i rock Narcissistic Style. New York: Norton, page 39
  6. ^ a b c Rappoport, Alan, Ph. D.Co-Narcissism: How We Adapt to Narcissistic Parents. The Therapist, in press
  7. ^ American Psychiatric Association: Diagnostic and Statistical Manual of Mental Disorders, Fourth Edition. Washington, DC, American Psychiatric Association, 1994, p. 659
  8. ^ Golomb, Elan PhD (1992). Trapped in the Mirror. New York: Morrow, pages 22
  9. ^ Wurmser L, Shame, the veiled companion of narcissism, in The Many Faces of Shame, edited by Nathanson DL. New York, Guilford, 1987, pp 64–92
  10. ^ Gabbard GO, subtypes of narcissistic personality disorder. Bull Menninger Clin 1989; 53:527–532
  11. ^ Young, Klosko, Weishaar: Schema Therapy - A Practitioner's Guide, 2003, Page 375
  12. ^ Young, Klosko, Weishaar: Schema Therapy - A Practitioner's Guide, 2003, chapter 10, Pages 373-424
  13. ^ Golomb, Elan PhD (1992). Trapped in the Mirror. New York: Morrow, page 23
  14. ^ Kohut, Heinz, (1971). The Analysis of the Self.

[edit] References

Full list in DSM-IV-TR)[1]

[edit] External links

[hide]
v • d • e
DSM-IV Personality Disorders
Cluster A (Odd) Schizotypal, Schizoid, Paranoid
Cluster B (Dramatic) Antisocial, Borderline, Histrionic, Narcissistic
Cluster C (Anxious) Dependent, Obsessive-Compulsive, Avoidant
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4.28.2008

Board rejects “technological arts” test for process patents | Stanford Center for Internet and Society - Sent Using Google Toolbar

Board rejects "technological arts" test for process patents | Stanford Center for Internet and Society

Board rejects "technological arts" test for process patents

by Lauren Gelman, posted on November 22, 2005 - 1:07pm.

The Board of Patent Appeals and Interferences addressed whether there was a separate "technological arts" test aside from the statutory subject matter test used to decide if an invention is eligible for patent protection. The pending patent application was for a method of compensating a manager who controls operations of a firm for the purpose of reducing the degree to which prices exceed marginal costs in an industry. The issue was whether the method was a process that could be excluded from patent protection. The board found that there was no separate test for "technological arts" and therefore reversed the decision of the patent examiners that the applicant's process was not patentable.

Originally, the patent application was rejected for non-statutory subject matter pursuant to 35 USC § 101. 35 USC § 101 provides that "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title." On appeal, the decision was reversed. The Examining Corps requested reconsideration, however, based on the issues of (1) whether the invention is in the technological arts and (2) if it is, whether the claim transferring compensation to a manager is a practical application. After further consideration the patent examiner maintained a rejection of the application under 35 USC § 101. The examiner stated that the invention and practical application were outside of the "technological arts" because the invention was "an economic theory expressed as a mathematical algorithm without the disclosure or suggestion of computer, automated means, apparatus of any kind." The appellant filed another appeal.

The Board of Patent Appeals and Interferences reversed the decision of the patent examiner, finding that the method in the patent claim was a process and rejecting the "technological arts" test. The patent examiner drew on In re Musgrave, 57 C.C.P.A. 1352 (C.C.P.A. 1970), to argue "mental steps" are not included within the "technological arts." However, the Board held that there was no "technological arts" test in Musgrave and declined to create one.

After holding that Musgrave did not apply, the Board cited two precedents to show that the applicant's method was a process and eligible for a patent. In AT&T Corp. v. Excel Communications, Inc, 172 F.3d 1352 (Fed. Cir. 1999), the Federal Circuit held that a process claim that applied a mathematical algorithm to "produce a useful, concrete, tangible result without pre-empting other uses of the mathematical principle, on its face comfortably falls within the scope of § 101." Also, the applicant's method did not come within the limits that the Supreme Court set for 35 USC § 101 in Diamond v. Diehr, 450 U.S. 175 (1981), excluding from patent protection "laws of nature, physical phenomena and abstract ideas." The applicant was therefore eligible for a process patent.

Administrative Patent Judge Smith dissented. Judge Smith stated that he would have upheld the examiner's rejection, finding a constitutionally mandated "technological arts" standard that requires a "threshold nexus to some field of technology." Judge Smith asserted that the "technological arts" standard "is intended to represent a more modern term for the reference to 'useful arts' in the Constitution." Judge Smith opinied that any laws passed by Congress to grant patents should be applied in a manner consistent with the constitutional mandate. Judge Smith stated that his view of the constitutional mandate "is that an invention must in some manner be tied to a recognized science or technology in order to promote the progress of the useful arts." Finally, Judge Smith warned that "[t]he majority's position that essentially anything that can be claimed as a process is entitled to a patent under 35 U.S.C. § 101 opens the floodgate for patents on essentially any activity which can be pursued by human beings without regard to whether those activities have anything to do with the traditional sciences or whether they enhance the technological arts in any manner."

In a separate and lengthy dissent, Administrative Patent Judge Barrett, joined by Judge Smith, opined that the process at issue was unpatentable subject matter under section 101. Judge Barrett asserted that the proper test for subject matter patentability under section 101 is that the steps of the process must "operate to physically transform physical subject matter (matter or some form of energy) to a different state or thing."

Packets Archive: Packets, Vol. 3, No. 3
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US - Biotechnological and Chemical Process Patents

US - Biotechnological and Chemical Process Patents

United States - Biotechnological and Chemical Process Patents

The U.S. patent law was amended on November 1, 1995, by adding new sub-section 35 USC 103(b) to provide that a biological process using or resulting in a composition of matter that is novel and non-obvious will itself be considered non-obvious if claims to the process are contained either in the same patent application as the claims to the new and non-obvious composition or in a separate application having the same effective filing date as the claims to the new and non-obvious composition made or used in the process. In addition it is required that the composition and the process at the time they were invented were owned by the same person or subject to an obligation of assignment to the same entity.

A biotechnological process is defined in the law as:

(A) a process of genetically altering or otherwise inducing a single or multi celled organism to (i) express an exogenous nucleotide sequence; (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence; or (iii) express a specific physiological characteristic not naturally associated with said organism; (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and (C) a method of using a product produced by a process defined by (A) or (B) or a combination of (A) and (B).

This law was enacted in response to the controversial decision of the Court of Appeals for the Federal Circuit in In re Durden. In that decision the Federal Circuit stated that, although an old process may become a new process when a previously unknown starting material is used and the product produced is new, this does not necessarily mean that the whole process has become non-obvious. Although the claim at issue in Durden was for a chemical process, the patenting of biotechnological processes was also affected by the Durden decision. For example, although a host cell for producing a genetically engineered form of protein could be patented, the use of the host cell to produce the protein was not patentable unless there was something inventive about the method used. In addition, the import of finished pharmaceutical products which were produced abroad using a host cell that was patented in the U.S. was legal because there had been no use of the patented material in the U.S. and the Process Patent Amendments Act did not apply because one could not secure a U.S. patent for the process used. The problem was exacerbated by the fact that in several countries there has been a problem in securing patent protection for the host cells used since these were regarded as being unpatentable "living matter".

When the change in the law was enacted last November, it was expected that a large number of applicants claiming biotechnological processes would choose to proceed in accordance with 35 USC 103(b). However, in December 1995, the Court of Appeals for the Federal Circuit issued two decisions, In re Brouwer and In re Ochiai, in which the issue before the court was whether as a general proposition a known process could be patented if it were limited to making or using a non-obvious product. In both cases the Federal Circuit criticized the Patent Office's routine application of Durden when a known process was used even though one or both of the starting products and end products was novel and non-obvious.

The Federal Circuit considered that "language in a process claim which recites making or using a non-obvious product must be treated as a material limitation and a motivation to make or use the non-obvious product must be present in the prior art for an [obviousness] rejection to be sustained." In Brouwer the applicant claimed a process for preparing a sulfoalkylated resin. Neither the starting materials (resin substituted methyl reactant) nor the sulfoalkylated resin that was produced were known or obvious and the Federal Circuit noted that none of the references cited by the Examiner contained any suggestion or motivation either to use a resin substituted methyl reactant or to obtain the product made by the claimed process and so the finding of obviousness was reversed.

Similar issues were addressed by the court in Ochiai. The claim in question defined a process which used a new and non-obvious acid to make a new and non-obvious cephem compound. The Federal Circuit noting that the Examiner had conceded that the acid used and the product made were not taught in the prior art and had relied on Durden in making the rejection. The Federal Circuit, noting that it would not have been obvious to choose the particular acid used by Ochiai as an acylating agent for the simple reason that the particular acid was unknown, reversed the obviousness rejection.

The Patent Office has now issued a Notice of Treatment of Product and Process Claims that directs examiners in examining claims for a process for making or using a novel and non obvious composition to consider the claim as a whole and view the making or using of a novel and non-obvious composition as a material limitation.

The notice states that a patentee may file a reissue application to permit consideration of process claims which qualify for §103(b) treatment "if a patent is granted on an application entitled to the benefit of §103(b) without an election having been made as a result of error without deceptive intent". Although not stated in the notice, if a patentee did not obtain process claims either because they were rejected based on an examiner's application of Durden or an applicant did not claim the process disclosed in the application because of Durden, a reissue application can also be filed. 35 USC 251 provides that "[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." It, however, may be possible to obtain process claims in reissue patents of patents granted more than two years ago. Although our sources at the PTO indicate that it may well adopt the position that a process claim for making or using a novel and non-obvious composition does not enlarge the scope of the claims of the original patent and so permit reissues to add process claims, no final determination on this has yet been made. Patentees may want to review their patent portfolios to determine whether reissue applications should be filed in an attempt to add process claims to their patents.
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26: Process Patents: Burden of Proof

26: Process Patents: Burden of Proof

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26: Process Patents: Burden of Proof
Article 34 Process Patents: Burden of Proof
1. For the purpose of civil proceedings in respect of the infringement of the
rights of the owner referred to in paragraph 1(b) of Article 28, if the subject
matter of a patent is a process for obtaining a product, the judicial authorities
shall have the authority to order the defendant to prove that the process to
obtain an identical product is different from the patented process. Therefore,
Members shall provide, in at least one of the following circumstances, that any
identical product when produced without the consent of the patent owner shall,
in the absence of proof to the contrary, be deemed to have been obtained by
the patented process:
(a) if the product obtained by the patented process is new;
(b) if there is a substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable through reasonable efforts
to determine the process actually used. Any Member shall be free to provide that
the burden of proof indicated in paragraph 1 shall be on the alleged infringer
only if the conditions referred to in subparagraph (a) is fulfilled or only if the
condition referred to in subparagraph (b) is fulfilled.
2. In adduction of proof to the contrary, the legitimate interests of the defen-
dants in protecting their manufacturing and business secret shall be taken into
account.
1. Introduction: terminology, definition and scope
Article 34 is concerned with patents the subject matter of which is a claim or
claims to a process for the manufacture of a product, which may itself be the
subject of a patent though it does not necessarily have to be.
Article 34 reverses the procedural principle under which the person asserting
a fact must prove it. Its purpose is to meet the so called "probatio diabolica":
it is always difficult for a plaintiff owning a process patent to prove whether
or not the process used by the alleged infringer to manufacture an identical
product to the one resulting from the patented process infringes his exclusive
496
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2. History of the provision
497
right, unless the plaintiff gains access to the manufacturing process of the alleged
infringer.
967
The conditions on which the onus of proof should be reversed are as follows:
968
1. The alleged infringer's product must be identical for material purposes to the
product produced by the patented process.
2. If this is the case, Members should implement a presumption that such product
has been obtained by the patented process if –
(a) the product obtained by the patented process is new; or
(b) if there is a substantial likelihood that the identical product (new or exist-
ing) was made by such process and the owner of the patent was unable through
reasonable efforts to determine the process actually used, and the patent owner
produces evidence that he/she has used reasonable efforts to try to determine the
process used and was unable to do so.
2. History of the provision
2.1 Situation pre-TRIPS
The rule on the reversal of the burden of proof was introduced by the 1891
German patent law (Article 139). It was also incorporated in the patent laws of
Italy, Belgium and Spain. It was also included in the Community Patent Conven-
tion (Article 35), as well as in the proposed WIPO treaty for harmonization of
patent law (Article 24)
969
on terms substantially similar to the text adopted later
on under TRIPS.
2.2 Negotiating history
Negotiations on this provision were based on the proposals submitted in 1990
by the European Communities, the USA and Switzerland. Equivalents of this
provision existed in both the Brussels Draft of TRIPS and in the Anell Draft of July
23, 1990. The two conditions for the reversal of the onus probandi were similar in
both drafts, but in its final version Article 34.2 makes it clear that Members may
provide that the onus shall be on the alleged infringer if either of the conditions
is fulfilled. During the negotiations the European Commission favoured the first
condition and the United States the second.
970
2.2.1 The Anell Draft
"2.3 Reversal of Burden of Proof
2.3A.1 If the subject matter of a patent is a process for obtaining a product, the
same product when produced by any other party shall, in the absence of proof to
967
See, e.g., Miguel Vidal-Quadras Trias des Bes, Process patents on new products and reversal
of the burden of proof: factors contributing to the interpretation of its scope, European Intellectual
Property Review 2002, vol. 24, No. 5, p. 237–243 (237) [hereinafter Vidal-Quadras Trias des Bes].
968
See Gervais, p. 171.
969
See WIPO, 1991, p. 32.
970
See Gervais, p. 172.
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498
Process patents: burden of proof
the contrary, be deemed to have been obtained by the patented process in [at least
one of] the following situation[s]:
(a) if the product is new, [or,
(b) where the product is not new, if there is a substantial likelihood that the prod-
uct was made by the process [and the owner of the patent has been unable through
reasonable efforts to determine the process actually used].
2.3A.2 In the adduction of proof to the contrary, the legitimate interests of the
defendant in protecting his manufacturing and business secrets shall be taken
into account.
2.3B Where the subject matter of a patent is a process for obtaining a product,
whether new or old, the burden of establishing that an alleged infringing product
was made by the patented process shall always be on the person alleging such
infringement."
Alternative 2.3B, introduced by developing countries, was clearly intended to
counter the proposals for reversal of the burden of proof. But this strategy was
not successful, as is obvious from the text finally adopted.
2.2 The Brussels Draft
"Reversal of Burden of Proof
1. For the purpose of civil proceedings in respect of the infringement of the rights
of the owner referred to in Article [28](1)(b), if the subject matter of a patent is
a process for obtaining a product,
PARTIES
[shall] [may] provide in at least one
of the following circumstances that any identical product when produced by any
party not having the consent of the patent owner shall, in the absence of proof to
the contrary, be deemed to have been obtained by the patented process:
(a) if the product obtained by the patented process is new;
(b) if there is a substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable through reasonable efforts
to determine the process actually used.
2. In the adduction of proof to the contrary, the legitimate interests of the de-
fendant in protecting his manufacturing and business secrets shall be taken into
account."
3. Possible interpretations
1. For the purpose of civil proceedings in respect of the infringement of the rights
of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of
a patent is a process for obtaining a product, ...
The reversal of burden of proof logically applies to civil procedures only, since the
presumption of innocence generally governs in criminal cases. The subject of the
patent for the reversal to proceed should be a "patent for obtaining a process". It
is left to Members, however, to determine whether such a process should be the
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3. Possible interpretations
499
sole object of the patent, or whether "hybrid" patents (including claims over both
a process and a product) should also be subject to Article 34.
This Article only applies, further, in cases where an infringement of the acts
described in Article 28.1(b) of TRIPS is alleged, that is, whenever the identical
product has been directly obtained with the patented process. It is not enough,
hence, to argue that the product is obtainable with such a process.
... the judicial authorities shall have the authority to order the defendant to prove
that the process to obtain an identical product is different from the patented
process.
Article 34.1 requires Members to empower their judicial authorities to order the
reversal of the burden of proof. It is not an operative, self-executing provision, but
requires positive action both by the Members and, in a particular case, the com-
petent judge. The defendant can be obliged to prove that the process is different
from the patented process, but cannot be obliged to prove that the process has
not been infringed. If the defendant proves that the process used by himself on
the one hand and the patented process on the other hand are different, the proof
of infringement, which would normally require the application of the "doctrine
of equivalents",
971
remains a plaintiff's burden, according to general principles of
procedural law.
972
Therefore, Members shall provide, in at least one of the following circumstances,
that any identical product when produced without the consent of the patent
owner shall, in the absence of proof to the contrary, be deemed to have been
obtained by the patented process:
Whether a product is "identical" to the product obtained by a patented process is
to be determined on the basis of its structural composition. Similarity, therefore,
is not sufficient to trigger the reversal of proof.
973
971
This doctrine provides a conceptual framework to determine if a violation of a patent exists
when there is no literal infringement of patent claims. See, e.g., Correa, 2000a, p. 85.
972
See the decision of the Barcelona Provincial Appellate Court of September 18, 2000, in
Enaaprile II, according to which the defendant's burden of proving the contrary "is confined to
disclosing the process actually used by the defendant (which would convert the proceedings into
a mere comparison of both processes) and to show that the two processes are not identical, but
not that the presumption also involves proof that the processes are not equivalent". See also the
judgment of the German Federal Court of June 25, 1976, in Alkylendiamine II, which held that a
similar rule under German law did not shift the responsibility for determining the scope of the
plaintiff's right on the defendant; but merely required the defendant to provide sufficient proof
of the process actually used in manufacturing the product. G.R.U.R 1997, p.103 (cases quoted in
Vidal-Quadras Trias des Bes, p. 240).
973
The German Federal Supreme Court in the Alkylenediamine II case clarified that the notion of
"same substance" under the old Patents Act Section 47(3) applied also when established differences
exist between two substances within the limits that technical experience shows to be attributable
to a variation of the patented process, but not the application of a different process. See Straus,
p. 820.
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Process patents: burden of proof
In addition to requiring that judges be empowered to order the reversal,
Article 34 provides for the establishment of a juris tantum presumption that the
patented process has been effectively used. This presumption admits proof to the
contrary.
As mentioned, the conditions stipulated in Article 34.1 for the reversal to proceed
constitute options for Members. They may opt for establishing one or the other,
974
at their discretion.
3.1 Article 34.1(a)
(a) if the product obtained by the patented process is new;
This condition, probably inspired by European law, requires the "newness" of the
product obtained through the protected process. In many cases, the product may
be new but not inventive and, hence, not patentable. In the case of countries that
did not grant product patent protection for pharmaceuticals or other products,
there exist many instances in which the inventor was able to patent the process,
but not the product. The rationale for this option is that when a product is new,
it is unlikely that competitors had the time to develop alternative processes to
obtain the same product. The older the product, the higher the possibility that
such alternatives have been developed.
975
For countries that opt for alternative (a), there is no obligation to order the
reversal of the burden for products which are not new.
TRIPS does not determine when a product should be considered new for the
purposes of this provision. Members enjoy considerable room for manoeuvre in
this respect. They may, for instance, establish that newness be judged:
(1) according to the novelty requirement under the patent law on the date of
the application (or the priority date). This solution is significantly advantageous
to the patent owner: though a long period may have passed between that date
and the date of infringement, the product would still be considered new for the
purposes of the burden of proof. Under this approach the attribute of new is fixed
once and forever ignoring that, as time passes, it may be reasonably presumed
that other processes to obtain the product may have been developed.
976
974
A "TRIPS-plus" solution may obviously be to order reversal of the burden of proof when any
of the conditions are met, as originally sought by the USA during TRIPS negotiations.
975
Thus, it has been noted that "it seems to be reasonable to assume that, where subsequent
processes have been described for obtaining the product resulting from the claimed patented pro-
cesses to the extent that such processes may vary to a greater or lesser extent, bring different
advantages or simply be practicable, when the patent invoked is close to expiry and alternative
processes have been described, these circumstances must be taken into account in order to under-
mine the grounds for presuming that the patented process has been used" (Vidal-Quadras Trias
des Bes, p. 242).
976
The District Court of Munich considered (as long ago as 1963) that the "new product" charac-
teristic required by the article of the Patent Law relating to the reversal of the burden of proof did
not necessarily have to be interpreted as having the same meaning as novelty for the purpose of
patentability. More recent German authors have taken the same view since such an interpretation
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3. Possible interpretations
501
Or:
(2) at the time the product is introduced into the market. If other products ob-
tained by non-infringing processes were available at that time, it would be prima
facie proven that other processes existed for obtaining the product and, therefore,
there would be no logical basis for the legal presumption to operate. This solution
was proposed in one of the texts considered in the preparatory work of the WIPO
Diplomatic Conference for the adoption of a Patent Law Treaty,
977
and has also
been suggested by some authorities in Europe.
978
3.2 Article 34.1(b)
(b) if there is a substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable through reasonable efforts
to determine the process actually used. Any Member shall be free to provide that
the burden of proof indicated in paragraph 1 shall be on the alleged infringer only
if the condition referred to in subparagraph (a) is fulfilled or only if the condition
referred to in subparagraph (b) is fulfilled.
A "substantial likelihood" is more than the mere "possibility". The plaintiff must be
able to prove that, in the circumstances of the particular case, the identical prod-
uct is likely to have been obtained with his patented process. Under this option,
the plaintiff would also have to prove that he has made reasonable and unsuccess-
ful efforts to determine what process was used, for instance, by undertaking the
chemical analysis of the product, requesting information from the product man-
ufacturer (if known and different from the alleged infringer), or other measures
that the owner could undertake at a reasonable cost and within a reasonable time.
3.3 Article 34.2
2. In adduction of proof to the contrary, the legitimate interests of the defen-
dants in protecting their manufacturing and business secret shall be taken into
account.
As noted, Article 34.2 makes it clear that the obligation to reverse the burden of
proof may apply in either the circumstances specified in Article 34.1(a) or (b) set
out above. If the product has in fact been produced by a different process, the
alleged infringer will not want to disclose his process to competitors. Article 34.2
would be contrary to the purpose of the procedural rule contained in German law (Vidal-Quadras
Trias des Bes, p. 242).
977
Article 301(1)(b) of the 1987 Draft Patent Law Treaty disregarded the presumption of infringe-
ment "if, at the time of the alleged violation, an identical product emanating from a source other
than the owner of the patent and the defendant was already known in commerce in the country
in which the patent applies". See, e.g., Harold Wegner, Patent Harmonization, Sweet & Maxwell,
London 1993, p. 334.
978
See, e.g., authors quoted by Straus, p. 821.
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Process patents: burden of proof
provides that in the presentation of evidence to the contrary, the legitimate
interests of the defendants in protecting their manufacturing and business secret
shall be taken into account. Obviously, those legitimate interests include not dis-
closing the defendant's trade secrets to the other side, including technical and com-
mercial information (e.g., the source of a given intermediate used in the process).
However, the defendant will be bound to disclose the process that has actu-
ally been used in order to rebut the juris tantum presumption. Otherwise, he
will be deemed as infringing the patent. A possible strategy to protect the defen-
dant's trade secrets is for the rules of court procedure of a Member to require
the trade secrets to be disclosed only to an independent expert, who is under
an obligation of secrecy, and who will advise the court under conditions of con-
fidentiality. Another strategy which is perhaps more appropriate to adversarial
(as opposed to inquisitorial) court procedures is to require the information to
be disclosed to one member of the plaintiff's team who is similarly bound by
an obligation of secrecy. That person will communicate the information to the
plaintiff's independent lawyers (who are similarly under an obligation of confi-
dentiality), who will then advise whether the proceedings are to continue or to be
discontinued.
"Legitimate interests", as defined by the panel in Canada-Patent protection of
pharmaceutical products, must be "construed as a concept broader than legal
interests",
979
encompassing any business interest that the defendant may legit-
imately wish to protect.
4. WTO jurisprudence
There is no WTO jurisprudence on this provision. In a case settled between USA
and Argentina after consultations, the Argentine government agreed to amend its
patent law in order to comply with Article 34.1. The proposed amendment opts
for the alternative provided for under Article 34.1 (a).
980
5. Relationship with other international instruments
This provision has no counterpart in either the Paris Convention or the Euro-
pean Patent Convention, both of which leave the question of onus of proof to
national law. However, Article 35 of the Community Patent Convention provides
that
"1. If the subject-matter of a Community patent is a process for obtaining a new
product, the identical product when produced by any other party shall, in the
979
WT/DS114/R, 17 March 2000, at para 7.71.
980
With regard to the definition of "new", the proposed amendment reads as follows: "[I]t shall
be presumed that, in the absence of proof to the contrary, the product obtained by the patented
process is not new if the defendant or if an expert appointed by the court at the request of the
defendant is able to show that, at the time of the alleged infringement, there exists in the market
a non-infringing product identical to the one produced by the patented process that originated
from a source different from the right owner or the defendant". See WT/DS171/3, WT/DS196/4,
IP/D/18/Add.1, IP/D/22/Add.1 of 20 June 2002.
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7. Comments, including economic and social implications
503
absence of proof to the contrary, be deemed to have been obtained by the patented
process.
2. In the adduction of proof to the contrary, the legitimate interests of the de-
fendant in protecting his manufacturing and business secrets shall be taken into
account".
6. New developments
In implementing the rule on reversal of burden of proof mandated by TRIPS, some
countries opted for alternative (a),
981
others for alternative (b),
982
while many in-
corporated both conditions set out in Article 34.1.
983
7. Comments, including economic and social implications
Process patents are a weak form of protection, because of the difficulties involved
in proving infringement. As noted above, formerly some countries while barring
the patenting of pharmaceutical products would allow the patenting of processes.
The effect was that for practical purposes pharmaceutical products were not
fully protected, because the key feature of a pharmaceutical product is usually
its molecule, and in practice the composition of this is fairly easy to analyse,
though the same molecule must be manufactured by an alternative method in
order not to infringe the process patent. Article 34 attempts to ameliorate this
weakness by reversing the onus of proof, so that if the defendant has produced
an identical product to that produced by the process patent, the onus shifts to
the defendant to show that the product was produced without use of the process
covered by the patent. It is, of course, no defence in patent law that the defendant
independently developed the identical process. Independent creation is a defence
in copyright and trade secrets law, but a patent confers an exclusive right on the
patentee.
The reversal of the burden of proof, hence, may be of particular importance in
developing countries and economies in transition that did not recognize product
patents for pharmaceuticals or in other fields of technology prior to the imple-
mentation of TRIPS. With the universal introduction of product patent protection
for pharmaceuticals and chemical products under Article 27.1, the practical im-
portance of such principle will diminish, since infringement of product patents
would be easier to prove. However, Article 34 will provide a valuable procedural
tool to patent holders that have only been able to obtain process and not product
protection.
Those countries that opted, in implementing Article 34.1, for alternative (a)
generally aimed at excluding the application of such a rule for products already
in the market. The extent to which this will be achieved, however, would depend
981
See, e.g., Argentine patent law 24.481 (Article 88).
982
This alternative is often found, for instance, in bilateral agreements concluded between the
USA and former centrally managed economies (Straus, p. 810).
983
See, e.g., Indonesian patent law No. 14 of year 2000 (Article 119); Industrial Property Common
Regime of the Andean Community, Decision 486 (Article 240).
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Process patents: burden of proof
on the way in which the concept of "new" is defined by law and jurisprudence. If
"new" is assimilated to the "novelty" standard for patentability, and a product was
new at the time of the patent application, it would remain "new" for the purposes
of the reversal of the burden of proof until the patent expires, possibly many years
after its introduction into commerce.
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