Legal Fictions and IP: Yes, No, Maybe

I am doing some writing for a chapter in a to-be-published collection to which I hope to contribute. I can't spill too many of the proverbial beans about the contents of the chapter. I can share, however, one point that I am exploring, namely whether there is any place for the notion of "legal fictions" in IP law. Let's consider the following definition of "legal fiction", taken from an article published over 20 years by Professor Eben Moglen of Columbia University (and one of the high priests of the free software movement). Writing in "In Legal Fictions and Common Law Legal Theory Some Historical Reflections" (Tel-Aviv University Studies in Law 1989) here, Moglen stated as follows:
"A legal fiction is a proposition about the substance or procedure of the legal system, purporting to be a principle or rule material to the determination of cases, which rests in whole or in part on factual premises known to be inaccurate at the time of the fiction's invocation. Each fiction, qua fiction, may be said to have a subject matter, comprised of the premise or premises counterfactually maintained. Fictions may have as their subject matter the parties' status or prior transactions in the case before the court; or the existence or relationship of third parties, places, or things not before the court; or they may assert facts about the tribunal, or about the history of the law itself. ... In addition to its subject matter, the fiction as fiction may be said to have the additional attribute of technique, or the device by which the counterfactual is declared. The simplest technique is assertion: the truth of the subject matter is announced without more, or having been asserted by a party is adopted by the court without scrutiny." 
Breaking down the elements of Moglen's definition, we have the following:
1. A rule or principle material in the determination of a case;
2. Subject matter that is known to be inaccurate (i.e., maintaining a counterfactual proposition as being true).
3. A mere assertion, otherwise unproven, about the truth of the counterfactual. 
As for the purpose of legal fictions, several Canadian judicial pronouncements are instructive:
1. "A legal fiction ... is an assumption of a possible thing as a fact, which is not literally true, for the advancement of justice, and which the law will not allow to be disproved, as far as concerns the purpose for which the assumption is made." Justice Lennox, Stoner v. Skene (44 Ontario Law Reports, , 1918).
2. "[l]egal fiction is an assertion accepted as true (though probably fictitious) to achieve a useful purpose, especially in legal matters." Staufen v. BC 2001 BCSC 779. 
Or, in more down to earth language, a legal fiction is a "dirty little factual secret" used to achieve some presumed useful purpose or goal. Keeping in mind that Moglen fashioned his definition in the context of the common law, I wonder whether we can identify any legal fictions in the IP world. The trick here is to find some IP counterfactual; the technique of assertion seems to follow rather easily.

Let me float one IP candidate for a legal fiction, a trade mark co-existence agreement. Such agreements are entered into to resolve an actual or potential conflict between two competing marks. The problem is that such agrements typically declare there is no confusion, or even likelihood of confusion, even if the underlying premise giving rise to the agreement is the existence of confusion. As for a valuable social purpose, I suppose that one can make an argument that such settlements, unless they are a camouflaged vehicle for anticompetitive behaviour, are desirable, especially when the alternative is continued contentious proceedings in either the courts or before the trade mark registry.

Right or wrong? Thoughts anyone? Other IP legal fictions anyone?
Legal Fictions and IP: Yes, No, Maybe Legal Fictions and IP: Yes, No, Maybe Reviewed by Neil Wilkof on Wednesday, March 30, 2011 Rating: 5


  1. I would presume that the most used legal fiction occurs in connection with deadlines for taking action or directly responding to a communication from the EPO. The deadline is set to expire a certain time, such as a number of months (meaning on the same date number the said number of months into the future) after the date of receipt of the communication. In order to avoid the variability of the postal services and any discussion of the actual date of receipt, the date of receipt for all communications is set at 10 days after the date of the communication. For many it creates havoc with calculating the very, very last date of responding when the 10-day period crosses from one month to the next, because we have 28, 29, 30, or 31 days in a month. Some try to add the 10 days to the end of the period to respond -- to their detriment. Obviously it should be added to the beginning.
    The 10-day period is a legal fiction. It becomes even more fictitious when a communication has been sent with postal return receipt. This creates a documented well-defined date, but for response purposes the 10-day "extension" is maintained.

    George Brock-Nannestad

  2. Legal fiction is broader, and encompases such a thing as the PHOSITA in the US system.

    As the debate about the KSR decision slowly gels, it cna be seen that such legal fictions can take upon themesleves a life of their own.

  3. In the context of patent law perhaps the existence, in any given case, of the 'person skilled in the art', would qualify as a legal fiction?

    Many contradictory characteristics have been ascribed to this person over time and geographic location, from 'ordinary creativity' combined with a complete lack of inventive faculty, to multiple-personality disorder where a 'team' is required. Sometimes s/he is seemingly an idiot-savant, with a head full of the world's knowledge, but no capacity to apply it in anything but the most mechanistic manner.

    I do not think that anyone really believes that such a person exists, but we all do a fine job of pretending!

  4. Not sure a co-exstence agreement qualifies. Of itself, it is not a rule applied by the courts etc.

    There are many others in trade marks law though. How about the more distinctive (inherent and through use)a mark, the more likely it is that a similar mark wil give rise to likelihood of confusion. It's the opposite in fact !

    There are others, but frankly Jeremy I'd get depressed as my whole life would become a fiction.

  5. How about the emission theory. An official legal fiction applied to EU broadcasts.

  6. I'm not sure I would agree with all of the previous examples. As for Jeremy's example: "Likelihood of confusion" to me does not qualify as a fact that can be "known to be accurate/inaccurate". Even more so as when you enter a co-existence agreement you typically do not have a clear-cut case (if such a thing even exists).
    In German IP law the typical application fo legal fiction is in one of the ways of calculating damages. You inaccurately assume that the infringer had entered a reasonable licensing agreement before using the contested IP and based on that the IP owner receives reasonable royalties.

  7. Isn't the much discussed Unilin decision of the Court of Appeal an example of legal fiction? Damages can be awarded and enforced in respect of a patent which, even before damages are assessed, has been found to be invalid, or amended beyond the scope of the original court finding, by the EPO. Although the patent is deemed never to have existed, the "right" to receive damages remains. Apparently this is in the interests of certainty. It certainly has nothing to do with justice!

    Actually, the Supreme Court may be looking at this point quite soon, but for the meantime the "fiction" remains,

  8. I'm not sure this qualifies, as any definition with the word "qua" in it is beyond me, but I've always thought that the principle at the EPO that novelty is basically assessed on a document by document basis is a legal fiction compared to the actual test: "does it form part of the state of the art?".

  9. To Dr Summerfield
    The skilled person, a chimera said to be stalking the EPO's environs, often talked about but never seen, isn't really a legal fiction. S/he is the patent world's "man on the Clapham omnibus" - referring to the objective test for negligence in English law - the one to whom applicant, examiner, attorney and judge alike can turn to and say "Well, what WOULD you have done? But don't be too smart!", the patent oracle, objectively slipping chameleon-like into the robes of the matter at hand, ready to deliver judgements of which Solomon would be proud.

    But one apparent fiction which is employed is that of universal publication, i.e. that when a document is published its contents are instantly available to the whole world. I've seen several cases where an application has been thwarted by a publication barely a few hours earlier, which no-one could reasonably or even possibly have seen, but which nevertheless instantly deprives an application of novelty. This corresponds with the two Canadian judgements mentioned.

    And, to finesse a point, novelty at the EPO is not based on a document by document basis, but on the time that something is "made available to the public" by several means, Art 54(2) EPC, although naturally documents are the main source of this. An article in the EPO Gazette last year told of how an opponent arranged for some rather chunky machinery to be presented during an opposition hearing in Munich! Try filing that electronically ;-)

  10. The requirement for US patent applications to be filed in the name of the inventors as if they owned the invention, even when the rights in the invention do not belong to them under UK law.

    When I worked in industrial practice, this often used to worry the more knowledgable inventors when the time came to make their first foreign filings: they were understandably reluctant to execute legal documents that purported to assign rights that they knew they did not own in view of the stern penalities referred to in the oath and declaration. We had to reassure tham that this was what you had to do in the US.

  11. More on state of the Art:
    Article 54(3) EPC.
    previously filed EP applications that were not published at the time of filing are considered as comprised in the state of the art, i.e. pubicly available (for novelty only!!! see last sentence Art. 56 EPC)

  12. Aren't IP rights themselves legal fictions?

    It isn't 'literally true' that there is an object to be bought, sold or lent in any metaphysical sense. However, it is economically convenient to invent one by creating a legal property right.

  13. As some others had said, I suggest that "the person skilled in the art" is a legal fiction in patent law - as she/he is required (in the US) to be conversant in every available publication anywhere in the world, in any language, to be of completely "normal" skill in all aspects of the relevant art (neither exceedingly stupid or intelligent in anything), and to have the "average" intuition and natural inventiveness, but nor more or less. Obviously, no such person actually exists.

    Also, the "reasonable royalty" for damages calculations is a legal fiction - how much would the 2 parties have licensed the IP for, if they would have negotiated a license for it instead of 1 side just infringing it? But this is only done after infringement is found, and of course, no license actually exists, otherwise one side would not be suing the other.

  14. The fiction that the word "for" in a claim merely indicates suitability and does not otherwise restrict the claim.

    For example a claim to "A widget for confusing inventors" is taken in the EPO guidelines as being a claim to a widget suitable for confusing inventors and lacks novelty over a widget for stirring tea that nevertheless has the hidden capability of confusing inventors.

    In contrast, Articles 54(4) and (5) EPC permit use limited product claims. When the EPO is perfectly capable of accepting use limited product claims in the medical field why does it struggle with use limited claims in other fields?

    This is an area where the person skilled in the art will normally reach a totally different conclusion from the person skilled in the law.

    Who are patents meant to be addressed to?

  15. Joining this discussion a little late, I would add the average consumer in EU trademark law who is deemed to be reasonably well-informed, observant and circumspect - a character who is surely quite fictional as compared with the "moron in a hurry" identified by Foster J.

    And on the subject of prior art, there is also the idea that the content of a document is made available to the public by leaving it on a shelf in the library of (say) Ulan Bator; or that a mode of operation of a traffic light, deducible by an expert monitoring its use, was made available to the public by an unannounced day's trial on a minor public road, even though it was most unlikely than any expert outside the patentee saw it, let alone monitored it: see Lux v Pike [1993] RPC 107


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