The text below represents commentary, not legal
advice.
Return to: Critical Copyright, and more.
Return to: Paul
Edward Geller, attorney.
Article published in the European
Intellectual Property Review, vol.
25 (2003), p. 515 and in translations in GRUR Int. (2004 ), p.
271 (German), Propriétés intellectuelles (2004), p. 503 (French), and Intellectual
Property Studies, no. 15 (2004), p. 78 (CASS IP Center) (Chinese).
Copyright © Paul Edward Geller 2003. For their critiques of prior drafts, the
author thanks Lionel Bently, Charles Berman, Robert Donovan, William Kingston,
Mark Lemley, Ejan Mackaay, Emil Markov, Mark Patterson, Jeremy Phillips, Jerome
Reichman, Dieter Stauder, and Toshiko Takenaka.
The author, coming out of a field free of formalities, takes full and
sole responsibility for both his opinions and errors as a patent
dilettante. All websites referenced here
were visited before the middle of 2003.
An
International Patent Utopia?
Paul Edward Geller
We habitually speak of the “international patent system”. Let us rather call this the “old patent
regime”, for the simple reason that it dates back to the Paris Convention,
already more than a century old. This
old regime is in crisis, as seen in the difficulties with which patent offices
are now processing filings. We shall
here undertake a thought-experiment, asking: How to use the Internet to help
resolve the crisis?[1]
The old patent regime has fallen out of step with technological
progress. Mankind started with
trial-and-error tinkering and shifted to cumulative experimentation.[2] In modern times, applied science has helped
to industrialise research and development.[3] Paradoxically, as this progress has
accelerated, it has precipitated the patent crisis. Ever-increasing numbers of ever-more complex
filings are swamping patent offices.[4] The old regime has not kept pace on critical
points: efficiency and transparency.
The crisis of the old regime can be seen, to start, in the difficulty
of efficiently applying patent criteria.
In the seventeenth and eighteenth centuries, patent laws were to provide
incentives for bringing “new” technologies to a country.[5] Moving into the nineteenth century, as research and development
industrialised, new technologies proliferated and became increasingly entangled
with each other. It was then only normal
to ask: Just how different from prior art should a technology be to attract
patent rights, a routine twist in the state of the art or some greater leap
forward?[6] Alongside novelty, non-obviousness or an
inventive step began to be required.[7]
This is not the place to
debate the theoretical merits of diverse patent criteria.[8] Here we rather address the practical
question: How does applying criteria of non-obviousness or of the inventive
step make it difficult to run patent offices efficiently? For example, it becomes all the more
difficult to make such delicate determinations credibly in the increasingly
dynamic contexts of technological progress.[9] It is also doubtful that such determinations
need to be made for all filings when only a fraction of these filings concern
commercially viable technologies.[10] These problems become acute as filings grow
in volume and intricacy.
The crisis also affects the transparency of the old regime. In the eighteenth century, patent applicants
began specifying their inventions for public disclosure.[11] Such disclosures were to enhance the
feed-back of technological information that promotes the “progress” of the “useful arts”.[12] Unfortunately, patent law itself can inhibit
disclosures outside filings: patents turn on priority, but pre-filing
publications are disfavoured in that they might undercut such priority.[13] Furthermore, patent offices do not themselves
disclose innovations quickly: once a patent application is filed, it normally
remains eclipsed under a veil of confidentiality, until is laid open some
eighteen months from filing.[14]
Different parties often have
diverging interests in transparency.[15] Lawyers have to maximise protection, whether
by patents or trade secrets. Research
directors have to look to the prospective income from innovations. Researchers often gain professional
advancement in making their results public.
Accordingly, to avoid the forfeiture of priority through disclosure,
lawyers all too often have to place researchers in the dilemma: either patent
or publish![16] Some patent laws have instituted legal
devices for dulling the horns of this dilemma, such as grace periods and
provisional applications.[17] But such exceptions only highlight the
general rules of priority and confidentiality that tend to slow down the
feed-back of innovations into research.[18]
Patent offices themselves face
a related bind as they are increasingly beset with filings. Indeed, these offices find their vocation as
current and complete public libraries of innovations put into question by the
proliferation of the very technologies that they are to make transparent.[19] In particular, they risk being caught between
delays in processing patent applications and obligations to open patent files
in eighteen months. Some solution is
called for to defuse these pressures.
To distinguish the old patent regime from what is proposed here, call
the latter the “interim regime”. For the
sake of feasibility, we shall try to dovetail the interim regime with the
Patent Cooperation Treaty (P.C.T.) and related practices.[20]
In the old regime, patent offices take filings, hold them locally in
closed files for some time, and, typically upon successful examination, grant
patents effective within national territories.
The interim regime would overlay all such systems, both the
first-to-invent system and first-to-file systems, with an international
first-to-post system.
Research and development set
the pace for the interim regime.
Research results can now be disclosed via the World Wide Web on globally
distributed databases. For example, in
the Human Genome Project, new information is posted at local websites tied
together into such a global database.[21] In the interim regime, new technologies would
be posted at any of a number of websites that, administered by designated
search authorities, would be linked to form a global database. The postings would be dated and accessible on
the World Wide Web as soon as they were made.[22]
The interim regime would require linking and programming local patent
databases into a globally distributed database to facilitate global
searches. Only upon the request of the
poster, coupled with appropriately modest fees, would a search authority
examine a posting on the global database.[23] If the data so warranted, the search
authority would issue an “interim certificate” that would provide evidence of
the completeness of the posting and of the novelty of the posted technology.
Global standards would govern
the form of postings. Such standards
would be designed to allow the indexing and searching of technologies,
including prior art, within the global patent database.[24] Meeting the standards would facilitate both
the certification contemplated here and private searches, for example, to
gather evidence for opposing rights asserted in disputed matters. An interim certificate would, for courts and
other decision-makers, provide evidence that a posting was formally
complete. Of course, such certification
could not a priori assure that the
posted technology would meet real-world criteria such as enablement. But a certificate of complete disclosure
could be weighed as evidence that such criteria were met.[25]
The interim certificate would
also constitute prima facie evidence
of the global novelty of a technology at posting. To expedite inquiry, it would not be asked
whether elements of any prior technology or of the posted technology would have
implicitly prompted a hypothetical person of ordinary skill in the art to draw
any inference for or against novelty. It
would only be necessary to compare the posting to prior art world-wide, element
by element, to see whether any new element appeared against the background of
“standards for what constitutes prior art [that] are generally already
extremely close.”[26] For reasons already indicated, notably to
avoid complicating examinations, the interim regime would not call for any
finding of non-obviousness or inventive step.[27]
Those readers who smell a fine
French perfume wafting about the interim regime have good noses. The classic French patent system, born in the
1790s, dated and acknowledged the receipt of filings, but with the caveat that
the “Government . . . does not intend to guarantee in any way property in, the
merit of, or the success of any invention”.[28] This French system, granting no presumptively
valid patents, left it up to the courts to dispose of infringement and other
disputed issues, and litigation was remarkably infrequent.[29] What we have chosen to call the “old regime”
was internationally based on the Paris Convention of 1883, and its purpose was
to co-ordinate national systems for granting patents. The interim regime proposed here would itself
grant no patents, but rather co-ordinate data to help deal with infringement
and disputes world-wide.
To understand these proposals,
consider the stakes of the old regime.
This regime puts the patent owner in a position to win the entire
jackpot of royalties to be earned in a local jurisdiction for a given
invention. Innovators who do not obtain
patents may well be cut out of these stakes: most notably, nothing may be left
for researchers whose publicly disclosed results might have helped patentees to
win jackpots. Nor may much be left for
researchers whose comparable technologies were developed at much the same time.[30]
This old, winner-take-all regime can thus be
inequitable. Further, as already
indicated, it can discourage the rapid disclosure of research results.[31] Such counter-productive consequences of the
old regime could be aggravated if its stakes were unconditionally
globalised. The interim regime would
start avoiding such consequences at the level of posting. The old patent regime is comparable to a game
of poker, in which claimants first bet with their cards largely hidden. Claimants file applications that normally
remain confidential for some time, and not all filings include all relevantly
useful elements. The interim regime
would be more like a game of poker that forces one to put all one's cards on
the table at once. Recall that global
novelty would be certified on the basis of newly disclosed elements of a
technology.[32] Thus the chances of assuring novelty would go
up as more elements were posted.
How to take account, in the
interim regime, of such rapid and full disclosure? To understand the remedies needed to this
end, we have to look at a larger context.
Patent law is just one branch within the entire law of industrial
property that protects technologies.
Patent law admittedly provides the strongest remedies in the field, but
these remedies only cover selected technologies. It is not possible to reform patent law
systematically without taking into account the rest of this law of industrial
property. For example, a party may now
rely on the law of trade secrets to protect a secret technology in initially
applying for a patent, but that protection lapses once a patent application has
been laid open to the public. Some
readers have surely already asked themselves: What would fill in for such
trade-secret protection in the interim regime, with its global disclosure upon
posting?
Consider so-called hybrid
industrial-property rights in sub-patentable technologies. Since the nineteenth century, such rights
have been granted in designs and utility models. In the twentieth century, they have been
instituted in such diverse subject matters as integrated-circuit designs and
plant varieties.[33] Hybrid rights normally arise in novel
technologies that do not necessarily have to be inventive; they generally have
shorter terms than do patents; and they call for injunctive and compensatory
relief. If such protection covers
sub-patentable technologies, a fortiori
it should cover a technology which, posted with global novelty in the interim
patent regime, displays a modicum of utility.
On that basis, a safety-net of remedies, substituting for trade-secret
protection, could be provided to protect the technology, even across borders. Such a safety-net could extend for a short
term, say, five years from posting with novelty, without prejudice to the full
patent term of twenty years.[34]
Some current laws of
industrial property are illustrative.
Cumulatively with their patent systems, some countries, such as Germany,
have instituted utility-model or like systems.[35] While patent systems take time to process
filings, utility-model and like systems grant certificates either upon filing
or upon an expedited examination. Thus,
“[w]hen an applicant fears [that] his invention may not meet the patentability
requirements or when he requires protection until [the] granting of a patent,
the possibility of ‘falling back’ on utility model protection provides a useful
safety-net for him.”[36] Similarly, protection under the global system
of the interim regime would continue during a shorter term, while protection
under purely local patent systems would, upon proof of requisites like
non-obviousness or inventive step, be available for the longer term.
Injunctions give “industrial property” the force of property. They exclude others from that slice of the
market which the law reserves to the property owner. In theory, it remains controversial how far
injunctive and related relief should extend and where solely compensatory
liability should be imposed.[37] In practice, in the interim regime, we
propose a bifurcated approach: courts would enjoin and otherwise sanction
misappropriation, while quasi-arbitral instances would settle royalty disputes.
Distinguish between a
duplicative infringer, on the one hand, and a contributor to a technology, on
the other.[38] By a “duplicative infringer” is meant a party
who makes, utilises, or markets a protected technology without developing any
element of the technology or without improving on that technology. By “contributor” is meant a party who,
relative to the claimant, either previously developed and disclosed at least
one indispensable element of the technology at issue or subsequently improved
on that technology. The interim regime
would entitle the first poster of a technology to commence judicial proceedings
for infringement, but it would allow for injunctive relief only against
duplicative infringers of the technology.[39]
Ideally, injunctions and other
sanctions should not impede the processes of innovation that patent law is to
promote. Of course, imposing injunctions
only against duplicative infringers would not stifle new technological elements
for the simple reason that, by definition, such infringers bring forth no such
elements. We have already touched on how
present patent rules may discourage contributors to technologies from making
their research results public;[40] the threat of
injunctions against contributors could keep innovations off the market. Previously contributing parties to a field of
technology should therefore be allowed to continue their uses, much as some
prior users may in some first-to-file systems.[41] By the same token, improvements that attract
patent rights should not necessarily be enjoined.[42]
This approach would affect
burdens of proof. A poster could give
its own evidence of novelty, for example, its own search results. Or the poster could expedite matters, notably
in applying for a preliminary injunction, by presenting an interim
certificate. In response, a prior
contributor could offer evidence of having previously made public a novel
element that is incorporated into the posted technology. That prior contributor could then, absent
proof to the contrary, defend against an injunction limiting its uses of its
novel element, but not against an injunction stopping the use of the entire
technology at issue. A later contributor
could, upon proof of its improvement, defend against an injunction limiting
uses of the improvement.
These defences would lie only
against injunctions, but not against compensatory awards. Of course, whether or not one is a
contributor to a technology, one must pay to use others’ innovations. The first poster of a technology could sue
later contributors to that technology and, in theory, in the resulting judicial
proceeding, hold such a contributor financially liable for using what the
poster had innovated. However, as we
shall now argue, litigation is not necessarily the most practical arena for
dealing with such monetary issues.
Indeed, we shall have to ask: How to co-ordinate defences to judicial
relief with procedures for settling royalty disputes?[43]
We thus come to the other task of our bifurcated remedies: shepherding
contributors to a technology into settling their disputes. Technologies tend to form “thickets” in which
technological elements are so tightly intertwined that one or a number of such
elements cannot be properly exploited without licensing others. For this reason and others, patent markets
sometimes break down, for example, when a claimant relative to a key element of
a technology holds out for unacceptable royalties.[44]
Dispute settlement would help
to forestall such market breakdowns. It
should also help to level the playing field between contributors, who might not
all equally afford litigation.[45] To commence a proceeding to settle royalty
disputes, a first poster or other contributor to a technology could specifically
serve a notice on still other contributors to that technology. As a further hedge against hold-outs, a
general notice could be posted world-wide to call for the settlement of all
royalty disputes relative to the technology at issue. Upon appropriate notice, the other
contributors would have a reasonable time to respond and enter dispute
settlement. Contributors who fail to
enter the proceeding could be made to suffer estoppel effects. For example, they could be precluded from
invoking contributors’ defences to judicial relief.[46] In addition, they could be precluded from
challenging any dispute-settlement award.
Courts and dispute-settlement
panels could shepherd contributors through this process. For example, adjudicating a suit against a
party who has entered but then obstructed dispute settlement, a court could
respond to that party’s bad-faith by withdrawing its contributor’s defences to
judicially granted injunctions; for good-faith participants, the court could
suspend imposing monetary awards pending the outcome of dispute
settlement. By the same token, a
dispute-settlement panel could require a bond to secure eventually awarded
royalties, or it could deem its own requirement of such a bond to be satisfied
by a bond posted in a prior pending judicial proceeding.
Dispute settlement could
include claims in both sub-patentable and patentable technologies. Imagine, for example, the developer of a new
but sub-patentable spring used in a pair of mouse-traps attracting patent rights,
the prior trap being improved in the later one.
The developer of the spring could seek royalties for each inventor’s use
of the spring; by the same token, the inventor of the prior mouse-trap could
seek royalties from the inventor of the improved mouse-trap for use of its
prior innovations. Absent agreement
between contributors, the dispute-settlement panel could set royalties for the
use of all pertinent elements.[47]
Any interim regime raises transitional issues. To follow through on our proposals, we now
have to analyse such issues and offer solutions. We must ask: How could the old patent regime
best be enhanced, if not superseded, by the interim regime?
The interim regime could be partially implemented without any change in
treaty or statutory law. To start, the
computerisation of patent files could be increasingly focused on integrating
these files, as well as the postings of new technologies, within a globally
distributed database. In addition, WIPO
or other agencies could build up the machinery necessary to settle royalty
disputes in all fields of technology.
Assuming a sufficient
infrastructure, what treaty provisions, with adequate implementation, would
assure the proposed legal effects? A
simplified P.C.T. option could result in certifying the completeness of a
posting and the novelty of the posted technology, as well as in fixing a
priority date.[48] Note that the interim regime, not making any
patent grant, would not predicate the validity of any such grant, so that the
issue of validity would not trouble cross-border enforcement.[49] Accordingly, treaty language could be adapted
from general Brussels provisions to assure that an injunction, once issued by a
court in one jurisdiction against duplicative infringement that crosses
borders, would be enforced by courts in other jurisdictions.[50] Treaty language adapted from the New York
Convention could authorise courts to enforce the awards of dispute-settlement
panels.[51] Other provisions could co-ordinate judicial
and dispute-settlement remedies.[52]
Assume that treaty and statutory provisions implemented the interim
regime. What consequences would continue
to follow from locally granted patents?
The interim regime would only overlay the old regime with remedies
triggered by interim certificates. Thus,
on points where international provisions for the interim regime, or statutes
implementing these provisions, were not expressly dispositive, national and regional
patent laws and grants would remain the default predicates of protection. Full terms and remedies, as well as
limitations and defences, would continue in effect for local patents on the
respective territories covered by such patents.
For example, an exclusion from patentable subject matter under a local
law would preclude full patent protection on the territory governed by that
law.[53]
A technology which has been
globally posted in the interim regime could represent prior art relative to
subsequent filings in local patent systems.
At the same time, the prima facie novelty
of such a globally posted technology could eventually fail to overcome the
novelty of a technology which was the subject matter of a filing previously
made in a local system, even though the posting was made before that filing was
laid open to the public.[54] This result would not necessarily undercut
the safety-net of injunctive and related relief that is contemplated here to
protect a novel technology for five years from posting. Such protection is based on the availability
of comparable remedies for sub-patentable technologies, and such remedies do
not everywhere predicate novelty in any absolute sense.[55] For example, rights in industrial designs
typically call for novelty of the designs to be protected, but that novelty may
relate only to what has been disclosed to the public.[56]
Ultimately, we have to
question the sense of maintaining complicated registration systems for designs,
utility models, and other sub-patentable technologies. The interim regime proposed here for patents
could be eventually co-ordinated with a comparable first-to-post system adapted
to sub-patentable technologies.
Articulating rights in patentable and sub-patentable technologies into
one regime would help dispute-settlement panels to determine royalties across
any given field where both types of rights come into play.[57]
Global uniformity among patent laws has become a holy grail.[58] The interim regime would fall short of such
uniformity: it would decentralise procedures among different patent offices and
leave the resolution of substantive issues to different courts and
dispute-settlement panels. It would
represent a compromise with regard to the question: Would global uniformity
undercut local competence or experimentation?[59]
How much harmonisation could
nonetheless be expected? European
experience in the domain of patents is edifying in this regard. The Europeans regionalised patent procedures
and directed courts to harmonise their substantive readings of patent laws and
claims.[60] Nonetheless,
a decade ago, different European courts clashed in reading patent claims
in virtually identical cases because, ostensibly, of entrenched jurisprudential
differences.[61] Recent case law now takes better account of
the need to interpret patents with an eye to “strengthening co-operation
between the signatories to the [European Patent] Convention”.[62]
The interim regime could
similarly harmonise judge-made law.
Consider key terms of patent law, for example, “abstract ideas”,
“scientific theories”, “mental steps”, “technical character”, “inventive step”,
etc. The difficulties surrounding these
notions betray uncertainties about basic patent distinctions and criteria that
lead into the conceptual black-hole of the patent crisis. There is no assurance that either
treaty-makers or legislators can dissipate such uncertainties with purely
verbal formulae.[63] It is submitted that the courts and
dispute-settlement panels would be best left to their own devices on such
matters. With time and experimentation,
their analyses could well converge on appropriate solutions.[64]
Return to the practical
exigencies bearing on a court faced with a petition for a preliminary
injunction in a case of cross-border infringement. In this quick-order kitchen, the heat is
likely to be intense: there might be hard evidence of infringement in multiple
jurisdictions, but only cursory showings of the laws applicable in all these
jurisdictions under the facts of the case.[65] In exercising discretion to fashion remedies
on the spot, judges could well base relief on harmonised views of all
applicable laws, if only by presuming these laws to conform to shared regional
or international standards.[66] Turn to royalties: dispute-settlement panels
would have the chance to harmonise standards on point in decisions that, unlike
arbitration decisions, need not be confidential. The panels’ jurisprudence could then be
subject to critical refinement by legal scholars and, eventually, by the
courts.[67]
In what language or languages would the interim regime work? A poster could be required to translate basic
information into a linguistically neutral code and to provide an abstract in a
commonly used language. This information
and abstract would give searchers some basis for deciding whether to have the
entire posting translated.[68]
Would the absence of a formal
patent grant in the interim regime lead to increased litigation? The interim regime would only facilitate
suing for injunctive relief in a small range of cases, those against
duplicative infringers. The fact that an
enterprise ran the risk of incurring sanctions for misappropriating a
technology without due consent would speak well of the commercial viability of
the technology. In order to exploit such
commercial promise expeditiously, contributors to a technology would do well to
compromise their differences. The
interim regime would then prompt the contributors to agree among themselves
while shepherding them into dispute settlement to set royalties.[69]
Any interim regime leaves
loose ends. For example, how would
postings, some inevitably flawed or overtaken by a poster’s further research,
be corrected or amended? Some readers
might be tempted to take such loose ends as hooks onto which to add
complications to the foregoing proposals.
It inevitably takes time and costs money to deal with complexity, for
example, to specify references to prior art or to negotiate amendments. Such further procedures, calling for higher
fees, could remain as add-ons that particular search authorities could offer at
their discretion. It could remain open
to third parties to post oppositions that would be linked to posted
technologies. Anyone sued or called into
dispute settlement could then easily find and invoke these oppositions.[70]
Why would claimants use the
interim regime? Consider the phenomenon
of defensive publication. Given the
costs of patenting in the old regime, many enterprises reveal their
technologies to constitute prior art that precludes their competitors from
patenting.[71] By posting under the interim regime,
innovators could accomplish the same purpose, while they would at the same time
hedge their bets with regard to the prospects of protection. They would have recourse to remedies to
defend their technologies globally and to procedures to settle royalty disputes
expeditiously, and they would preserve their chances to obtain local
patents. With increased disclosures, the
public would benefit from the more rapid and massive feed-back of innovations
into research.
But there is a deeper reason
for our thought-experiment than providing new, more global options for
innovators. Our essay is intended to
provoke reflection about how to prepare for an increasingly volatile future in
the field of patents. Whenever we have
written “the old regime” above, we have thought: the political Ancien Regime on the eve of the French
Revolution. The old patent regime now
faces, as that Ancien Regime once
did, the threat that its constituents might simply refuse to pay the inexorably
rising costs of all its long-held formalities.
However utopian, our experiment seems more realistic than attempts to
globalise all the old, complicated formalities.
__________________________
[1] Sundry projects to meet the crisis are under
study. For examples, see WIPO Patent
Agenda: Options for Development of the International Patent System, Doc.
A/37/6, 19 August 2002 <http://www.wipo.int/eng/document/govbody/wo_gb_ab/pdf/a37_6.pdf>;
U.S. Patent and Trademark Office, The 21st Century Strategic Plan, 3 June 2002
<http://www1.uspto.gov/web/offices/com/strat2001/index.htm>.
[2] For overviews, see Arnold Pacey, Technology in World Civilization: A
Thousand-Year History (MIT Press, 1990); Paul A. David, “From Keeping
‘Nature's Secrets’ to the Institutionalization of ‘Open Science’”, Draft of 23
March 2001
<http://www-econ.stanford.edu/faculty/workp/swp01006.pdf>.
[3] For further analysis, see William Kingston, Innovation: the Creative Impulse in Human
Progress (John Calder, 1977), pp. 91-97; for examples, see Charles
Bazerman, The Languages of Edison's Light
(M.I.T. Press, 1999); Jürgen G. Backhaus (ed.), The Economics of Science Policy: An Analysis of the Althoff System
(1993) 20 Journal of Economic Studies, no. 4/5.
[4] For details, see WIPO Patent Agenda, n. 1
above, at 2-4; Setsuko Asami, “A View toward the Global Patent -- Mutual
Exploitation of Examination Results” (2002) 27 A.I.P.P.I. (Japan) 12 at 14-16.
[5] U.K. Statute of Monopolies, Statutes at
Large, 21 James 1, ch. 3, § 6 (1624).
For background, see Jeremy Phillips, “The English Patent as a Reward for
Invention: The Importation of an Idea” (1982) 3 Journal of Legal History 71.
[6] See Brad Sherman and Lionel Bently, The Making of Modern Intellectual Property
Law: The British Experience 1760-1911 (Cambridge Univ. Press, 1999), pp.
150-157 and 176-180.
[7] See Hans Ullrich, Standards of Patentability for European Inventions: Should an Inventive
Step Advance the Art? (I.I.C. Studies, 1977).
[8] For critical analyses, see Dan Burk and Mark
A. Lemley, “Is Patent Law Technology-Specific?” (2002) 17 Berkeley Technology
and Law Journal 1155; John Barton, “Reforming the Patent System” (2000) 287
Science 1933.
[9] For data on patent procedures in these
contexts, see John R. Allison and Mark A. Lemley, “Empirical Evidence on the
Validity of Litigated Patents” (1998) 26 American Intellectual Property Law
Association Quarterly Journal 185; John L. King, “Patent Examination Procedures
as Inputs to Patent Quality”, The National Academies, STEP Conference on New
Research on the Operation and Effects of the Patent System, 22 October 2001
<http://www7.nationalacademies.org/step/King_paper.doc>.
[10] For details, see Mark A. Lemley, “Rational
Ignorance at the Patent Office” (2001) 95 Northwestern University Law Review
1495.
[11] For background, see John N. Adams and Gwen
Averly, “The Patent Specification: The Role of Liardet v. Johnson” (1986) 7 Journal of Legal History 156.
[12] U.S. Constitution,
art. I, § 8, cl. 8. For one
Enlightenment view, see Thomas Jefferson, Letter to Isaac McPherson, 13 August
1813 <http://odur.let.rug.nl/~usa/P/tj3/writings/brf/jefl220.htm> .
[13] For an example, see the “Allopurinol”
decision, Dr. Georg Henning GmbH v. The
Wellcome Foundation Ltd., Federal Court of Justice (Germany), 15 October
1974, [1975] GRUR 131, in English translation in (1976) 7 I.I.C. 105.
[14] For examples, see Patent Cooperation Treaty,
arts. 21, 30; European Patent Convention, art. 93; Japan, Law No. 121 of 13
April 1959, as last amended by Law No. 220 of 22 December 1999, § 64.
[15] For further analysis, see Clarisa Long, “The
dissonance of scientific and legal norms” (1999) 13 Social Epistemology 165.
[16] For a graphic formulation, see European Patent
Office, “The seven deadly sins of the inventor: 2. The invention is not kept
secret until the date of filing”
<http://www.european-patent-office.org/epo/sin/index.htm>.
[17] For an international example, see Paris
Convention for the Protection of Industrial Property, art. 11 (Stockholm Act);
for a national example, see U.S.A., Patent Act, 35 U.S.C. §§ 102(b), 111(b)
(2002).
[18] For examples, see E.G. Campbell, “Data
withholding in academic genetics” (2002) 287 Journal of the American Medical
Association 473; NHGRI Policy Regarding Intellectual Property of Human Genomic
Sequence, 9 April 1996 <http://www.genome.gov/page.cfm?pageID=10000926>.
[19] Note that inefficiencies in the patent
process, and resulting costs, sometimes lead enterprises to engage in so-called
defensive publication, which outflanks patent offices as libraries of
technologies. For further analysis, see text accompanying note 71 below.
[20] For examples, see Asami, n. 4 above, at 16-18, 20-25; Charles
Berman, “A global patent solution comes into view”, Managing Intellectual
Property, October 1999, p. 70.
[21] For examples, see
<http://www.ncbi.nlm.nih.gov> and <http://www.ensembl.org/>.
[22] Such disclosure would moot the need for grace
periods, provisional filings, etc. For a
critical analysis, see Sven J.R. Bostyn, “International Harmonization of the
Patent System” (2002) 27 A.I.P.P.I. (Japan) 310 at 385-394.
[23] For parallels, see European Patent Convention, arts. 90-96; Japan, Law No. 121 of 13 April 1959, §§ 48bis-48ter.
[24] For information on the International Patent
Classification and the Trilateral Concurrent Search Project, moving toward such
standards, see respectively
<http://www.wipo.int/classifications/en/ipc/preface.htm> and
<http://www.jpo.go.jp/saikine/tws/twsindex.htm>.
[25] In any event, controversial requirements, for
example, for best-mode disclosures, could be left out. For analysis, see Toshiko Takenaka, “The Best
Patent Practice or Mere Compromise: An Overview of the Current Draft of the
Substantive Patent Law Treaty and a Proposal for a ‘First to Invent’ Exception
for Domestic Applicants” (2003) 11 Texas Intellectual Property Law Journal 259.
[26] WIPO Patent Agenda, n. 1 above, at 6.
[27] See text accompanying ns. 5-10 above.
[28] Quoted in
Jean Foyer and Michel Vivant, Le
droit des brevets (Presses universitaires de France, 1991), p. 28 (our
translation).
[29] See ibid.,
pp. 207-208.
[30] For another analysis, see John S. Leibovitz,
“Inventing a Nonexclusive Patent System” (2002) 111 Yale Law Journal 2251.
[31] See text accompanying ns. 11-19 above. For
further analysis, see Mark R. Patterson, “Patent Races with No Entrants”,
Fordham University School of Law, Research Paper 22, October 2002
<http://papers.ssrn.com/paper.taf?abstract_id=336220>.
[32] See text accompanying ns. 26-27 above.
[33] For a seminal analysis, see J.H. Reichman,
“Legal Hybrids Between the Patent and Copyright Paradigms” (1994) 94 Columbia
Law Review 2432, and “Charting the
Collapse of the Patent-Copyright Dichotomy: Premises for a Restructured
International Intellectual Property Regime” (1995) 13 Cordozo Arts &
Entertainment Law Journal 475.
[34] There is nothing magic about this number,
which is proposed to provide interim protection while local patent filings are
processed. Note that a P.C.T.
application, laid open eighteen months from a Paris-priority filing date, need
not lead to some national filings for up to thirty months from that date,
possibly leaving the technology in question without trade-secret protection for
some time. See Patent Cooperation
Treaty, arts. 21-23.
[35] Germany, Utility Model Law of 28 August 1986,
as last amended 2 September 1994.
[36] Michael Kern, “Towards a European Utility Model
Law” (1994) 25 I.I.C. 627 at 644-645.
[37] For a framework of analysis, see Guido
Calebresi and A. Douglas Melamed, “Property Rules, Liability Rules, and
Inalienability: One View of the Cathedral” (1972) 85 Harvard Law Review
1089.
[38] For a comparable analysis in copyright law,
see Paul Edward Geller, “Hiroshige
v. Van Gogh: Resolving the Dilemma of Copyright
Scope in Remedying Infringement” (1998) 46 Journal of the
Copyright Society of the USA 39.
[39] In egregious cases of duplicative infringement,
injunctions and compensatory awards could be supplemented with deterrent
monetary awards. For a comparative
analysis, see Gunnar W.G. Karnell, “Gedanken zur Bemessung von
Schadensersatzansprüchen bei Patentverletzungen” [1996] GRUR Int. 335.
[40] See text accompanying ns. 11-19 above.
[41] For examples, see France, Law No. 92-597 of 1
July 1992, on the Intellectual Property Code, as last amended by Law No.
96-1106 of 18 December 1996, art. L. 613-7; Japan, Law No. 121 of 13 April
1959, § 79. For further analysis, see
John Neukom, “A Prior Use Right for the Community Patent Convention” [1990]
E.I.P.R. 165.
[42] For an example of U.S. case law with
comparable effects, see Robert P. Merges, “Intellectual Property Rights and
Bargaining Breakdown: The Case of Blocking Patents” (1994) 62 Tennessee Law
Review 75 at 91-94, 102-105. For an
example of a statutory license to comparable effect, see Japan, Law No. 121 of
13 April 1959, § 92.
[43] See text accompanying ns. 46-47 below.
[44] For examples, see Michael A. Heller and
Rebecca Eisenberg, “Can Patents Deter Innovation? The Anticommons in Biomedical
Research” (1998) 280 Science 698; Carl Shapiro, “Navigating the Patent Thicket:
Cross Licenses, Patent Pools, and Standard-Setting”, in Adam B. Jaffe, Josh
Lerner, and Stern Scott (eds.), Innovation
Policy and the Economy (Cambridge, M.I.T. Press, N.B.E.R., 2001), vol. 1,
p. 119, also at <http://faculty.haas.berkeley.edu/shapiro/thicket.pdf>.
[45] For analysis and data, see William Kingston,
“The Case for Compulsory Arbitration: Empirical Analysis” [2000] E.I.P.R. 154.
[46] See text accompanying ns. 41-43 above.
[47] For criteria for setting royalties, see J.H.
Reichman, “Of Green Tulips and Legal Kudzu: Repackaging Rights in Subpatentable
Innovation” (2000) 53 Vanderbilt Law Review 1744 at 1783-1787.
[48] Quaere whether
a new rule of global priority should be fashioned more appropriately for the
new world of instantaneously global Internet postings? See text accompanying note 54 below. The one-year Paris priority period was, of
course, developed for the old world of delayed cross-border filings. See Paris Convention, art. 4; Patent
Cooperation Treaty, art. 8.
[49] For a comparative analysis, see Cláudio R.
Barbosa, “From Brussels to The Hague -- The Ongoing Process Towards Effective
Multinational Patent Enforcement” (2001) 32 I.I.C. 729.
[50] I.e., Articles
31 et seq., not article 22(4), of the Council Regulation (EC) 44/2001
(O.J. 2001 L 12), which supersedes the Brussels Convention on Jurisdiction and
the Enforcement of Judgments in Civil and Commercial Matters of 27 September
1968.
[51] I.e.,
the Convention on the Recognition and Enforcement of Foreign Arbitral Awards.
[52] See text accompanying ns. 40-47 above.
[53] For an example, see Harvard College v. Canada (Commissioner of Patents), Supreme Court
(Canada), 5 December 2002, Cite No. 2002 SCC 76, File No. 28155
<http://www.lexum.umontreal.ca/csc-scc/en/rec/html/harvard.en.html>.
[54] That is, defensively, the global posting would
not necessarily serve as prior art for a previously made but undisclosed filing
which, offensively, could be asserted in some systems against the posting. For
an example, see U.S.A. Patent Act, 35 U.S.C. § 102(e). Some account has to be taken of Paris
priority here. See note 48 above.
[55] See text accompanying ns. 33-36 above.
[56] For an example, see Council Regulation (EC) 6/2002, art.
5, O.J. 2002 L 3.
[57] See text accompanying n. 47 above.
[58] For diverse points of view, see WIPO Patent
Agenda, n. 1 above, at 5-6; Charles Berman, “Moving the patent process into the
21st century”, Managing Intellectual Property, March 1997, p. 24.
[59] For a critical analysis, see John F. Duffy,
“Harmony and Diversity in Global Patent Law”
(2002) 17 Berkeley Technology Law
Journal 685.
[60] For background, see Dieter Stauder, “The
History of Art. 69(1) EPC and Art. 8(3) Strasbourg Convention on the Extent of
Patent Protection” (1992) 23 I.I.C. 311.
[61] For this analysis, see Brad Sherman, “Patent
Claim Interpretation: The Impact of the Protocol on Interpretation” (1991) 54
Modern Law Review 499.
[62] Pharmacia
Corporation v. Merck & Co., Inc., Court of Appeal (Civil Division)
(U.K.), 14 December 2001, [2001] EWCA Civ 1610, para. 159 (Arden L.J.).
[63] For critical analyses, see Burk and Lemley, n.
8 above; Allen Newell, “The Models Are Broken, The Models Are Broken!” (1986)
47 University of Pittsburgh Law Review 1023.
[64] For examples, see Toshiko Takenaka,
“Harmonizing the Japanese Patent System with Its U.S. Counterpart Through
Judge-Made Law: Interaction Between Japanese and U.S. Case Law Developments”
(1998) 7 Pacific Rim Law & Policy Journal 249; Graeme B. Dinwoodie,
“International Intellectual Property Litigation: A Vehicle for Resurgent
Comparativist Thought?” (2001) 49 American Journal of Comparative Law 429.
[65] On the choice of laws in such cases, see Paul Edward
Geller, “International
Intellectual Property, Conflicts of Laws, and Internet Remedies” [2000]
E.I.P.R. 125.
[66] For an example, see Applied Research Systems Holding N.V. v. Organon, Court of Appeals,
The Hague (Netherlands), 3 February 1994, in English translation in (1997) 28
I.I.C. 558. Note that preliminary
injunctions, which would be available only against duplicative infringement
under the interim regime, would not typically present many issues, such as
equivalents or validity, on which it would be difficult to harmonise laws. See text accompanying ns. 38-42 and n. 49
above.
[67] In this regard, the interim regime would
follow the regime for settling disputes concerning domain names. For further analysis, see Laurence R. Helfer
and Graeme B. Dinwoodie, “Designing Non-National Systems: The Case of the
Uniform Domain Name Dispute Resolution Policy” (2001) 43 William and Mary Law
Review 141.
[68] A posting could be required to be in a
designated language or in one of a number of designated languages. See Patent Cooperation Treaty, art. 3(4)(i);
Regulations under the P.C.T., rule 12.
[69] For business reasons to reach patent
agreements, see Peter C. Grindley and David J. Teece, “Managing Intellectual
Capital: Licensing and Cross-Licensing in Semiconductors and Electronics”
(1997) 39 California Management Review 8.
[70] Since the interim regime includes no patent
grant, it does not give rise to problems of pre-grant and post-grant oppositions. For further analysis, see Jay P. Kesan,
“Carrots and Sticks to Create a Better Patent System” (2002) 17 Berkeley
Technology Law Journal” 763.
[71] For one source, see
<https://my.ip.com/?ipcomAffiliate=derwent>. For a more expansive analysis, see Oren Bar-Gill
and Gideon Parchomovsky, “The Value of Giving Away Secrets”, Harvard Law
School, Law & Economics Discussion Paper 417, April 2003
<http://papers.ssrn.com/paper.taf?abstract_id=404260> and
<http://www.law.harvard.edu/programs/olin_center/>.