[A2k] WIPO paper on limitations and exceptions to the exclusive rights of patents

[Thiru Balasubramaniam]

http://www.keionline.org/blogs/2009/03/17/wipo-paper-exceptions-limitations=
-patents/


WIPO paper on limitations and exceptions to the exclusive rights of
patents
By thiru, on March 17th, 2009

The International Bureau has released a 47-paged paper in preparation
for the 13th Session of the WIPO Standing Committee on the Law of
Patents (23 March-27 March, 2009) entitled Exclusions from patentable
subject matter and exceptions and limitations to the rights (SCP/13/3).

In its introduction to the treatment of patent exceptions and public
policy, the paper asserts:

     Although many countries share general public policy objectives,
the concrete means as to how to reach those objectives often vary from
one country to the other. Public policy consideration may be
influenced by the socio-economic conditions and the country=92s
priorities, and vice versa. Historical, cultural and religious
conditions may be important factors for shaping ethical and moral
considerations. Therefore, public policy considerations are hardly
ever static: they change over time, reflecting the needs and realities
of the various countries.

     Excluding certain categories of subject matter from patentability
can neither stop
     inventors from inventing in the area of such subject matter, nor
can it prohibit the commercial exploitation of such inventions.
Indeed, where no patent exists, nobody is required to obtain the
consent from the inventor to use the invention. It is sometimes argued
that the control of commercial activities based on, for example,
ethical, health and environmental grounds should rather be regulated
by other laws than the patent law. On the other hand, some argue that
the patent system does not exist in a vacuum, and that the State
should not grant exclusive rights to inventions that obviously harm
public interests and consequently do not deserve to generate any
economic return thanks to patent protection.

In describing the architecture of exceptions and limitations in the
realm of patents, the paper states,

     Generally speaking, there are two types of exceptions and
limitations that allow States to fine-tune the different interests
among stakeholders. First, there are provisions that exclude, or allow
for the exclusion of, certain uses of a patented invention from being
addressed in infringement proceedings in national laws as well as
under international treaties. The second type of exceptions and
limitations is characterized by the fact that a patentee cannot stop
third parties from using his patented invention, but is entitled to
remuneration against such use. In other words, although the injunctive
relief is significantly limited, a right to remuneration against the
use of the invention is maintained. So-called compulsory licenses (or
non-voluntary licenses) are often used to put this type of limitation
in place.

On the role of exceptions and limitations, the paper notes,

     In an analogous manner to the exclusions from patentable subject
matter, at first sight, the consequence of limiting the scope of the
enforceable rights may lead to reducing the incentives for inventors
to invest in innovative activities. It is a public policy choice
whether, under certain circumstances, it is considered more adequate
to allow anybody to use the patented technology, or to allow the
patentee to exercise the exclusive rights with a view to better
promote innovation and increase social welfare. However, the legal
assurance of non-infringement through uses by others than the patentee
does not necessarily mean that these others can immediately exploit
the patented invention. While the patent system requires the
disclosure of patented inventions in a manner clear and complete so
that a person skilled in the art can carry out the claimed invention,
often, a significant amount of know-how is involved in order to
achieve an optimal exploitation of the invention.

On the matter of international civil aviation, the paper cites Article
27 of the Convention on International Civil Aviation (190 State
parties) which states:

     Article 27 of the Chicago Convention extends the exceptions to
the patent rights with respect to international air navigation so that
the authorized entry of an aircraft in the territory shall not entail
any seizure of the aircraft on the grounds of a patent infringement.
The provision provides that, while engaged in international air
navigation, any authorized entry of an aircraft of a contracting State
into the territory of another contracting State or authorized transit
across the territory of such State with or without landings shall not
entail any seizure or detention of the aircraft or any claim against
the owner or operator thereof or any other interference therewith by
or on behalf of such State or any person therein, on the ground that
the construction, mechanism, parts, accessories or operation of the
aircraft is an infringement of any patent, design, or model duly
granted or registered in the State whose territory is entered by the
aircraft. Further, a similar exception to the patent rights applies to
the storage of spare parts and spare equipment for the aircraft and
the right to use and install the same in the repair of an aircraft of
a contracting State in the territory of any other contracting State,
provided that any patented part or equipment so stored shall not be
sold or distributed internally in or exported commercially from the
contracting State entered by the aircraft

In its treatment of Article 30 of the TRIPS Agreement which deal with
the exceptions to the rights conferred by patents, the International
Bureau discusses the Canada-Patent Protection of Pharmaceutical
Product case (DS114) in great detail by noting that the WTO Dispute
Settlement Panel provided guidance on the conditions set out by
Article 30 of the TRIPS Agreement.

     First, the Panel found that the three conditions apply
cumulatively, and =93the exact scope of Article 30=92s authority will
depend on the specific meaning given to its limiting conditions=94. When
examining the words of those conditions, =93both the goals and the
limitations stated in Articles 7 and 8.1 must obviously be borne in
mind, as well as other provisions of the TRIPS Agreement which
indicate its objective and purposes=94.

     Second, the Panel held that the =93limited=94 character of an
exception should be =93measured by the extent to which the exclusive
rights of the patent owner have been curtailed=94.

     With respect to the expression =93normal exploitation of the
patent=94, the Panel considered that it referred to the =93commercial
activity by which patent owners employ their exclusive patent rights
to extract economic value from their patent=94. The term =93normal=94 was
interpreted by the Panel as the combination of =93an empirical
conclusion about what is common within a relevant community=94 and =93a
normative standard of entitlement=94. Further, the Panel=92s decision
stated that, while the specific forms of patent exploitation by the
patent owner are not static, =93protection of all normal exploitation
practices is a key element reflected in all patent laws=94. In the
specific circumstances of the case, the Panel concluded that the
=93additional period of de facto market exclusivity created by using
patent rights to preclude submissions for regulatory authorization
should not be considered =93normal=94. It was not a =93natural or normal
consequences of enforcing patents rights=94, but rather an =93unintended
consequences of the conjunction of the patent laws with product
regulatory laws=94 that resulted in such additional period of de facto
market exclusivity.

     As regards the third criteria, the Panel concluded that the term
=93legitimate interest=94 must be =93defined in the way that it is often
used in legal discourse =96 as a normative claim calling for protection
of interests that are =91justifiable=92 in the sense that they are
supported by relevant public policies or other social norms=94. In the
specific circumstances of the case, the Panel considered that the
=93interest claimed on behalf of patent owners whose effective period of
market exclusivity had been reduced by delays in marketing approval
was neither so compelling nor so widely recognized that it could be
regarded as a =91legitimate interest=92 within the meaning of Article 30.

The latter part of the WIPO paper provides examples of regional and
country legislation on experimental use and scientific research (page
27) as well examples of compulsory licensing and government use
provisions (page 36).

The 13th session of the WIPO Standing Committee on the Law of Patents
(March 23-March 27) affords Member States and Observers a golden
opportunity to pay closer heed to the role of exceptions and
limitations to the exclusive rights of patents; this chance should not
be lost in vain. The fact that the WIPO=92s technical patent committee
with norm-setting functions is providing a detailed treatment of
limitations and exceptions augurs well for a positive agenda at WIPO
in the context of witnessing tangible fruits of the WIPO Development
Agenda. One hopes the outcomes of this WIPO patent committee,
particularly with respect to the agenda item on limitations and
exceptions to the exclusive rights of patents, will engender rich
discussions at the WIPO Conference on Intellectual Property and Global
Challenges (July 13-14, 2009). This WIPO Conference will address
=93issues relating to the interface of intellectual property with other
areas of public policy, notably health, the environment, climate
change, food security and disability, and serve as a global forum to
discuss issues and solutions to some of the major challenges in
relation to intellectual property the world faces today=94.

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March 17th, 2009 | Tags: Add new tag, Canada-Patent Protection of
Pharmaceutical Product case (DS114), Chicago Convention, climate
change, disability, environment, exceptions, food security, health,
limitations, public policy, research exception, SCP, Standing
Committee on the Law of Patents, wipo | Category: Access to knowledge,
Politics and Advocacy, Reading Disabled, compulsory licensing, patents
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Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru@keionline.org


Tel: +41 22 791 6727
Mobile: +41 76 508 0997