[Ecommerce] Re: Four proposals for WIPO PCT Working Group on Reform
Jeff Williams
jwkckid1@ix.netcom.com
Wed May 5 17:11:09 2004
Jamie and all,
I and some of our INEGroup members applaud several parts of these
four proposals. It is clear and has been for a number of years that
I am aware of and have been actively involved in that patent law in
the US as well as a number of other countries needs reform as well
as restructuring.
Today, a article, http://www.msnbc.msn.com/id/4837371/ shows
fairly clearly why patent law and legal strategies need to be addressed
and why and how some area where WIPO's PCT Working Group
need to address more fully and directly.
James Love wrote:
> INTERNATIONAL PATENT COOPERATION UNION
> (PCT UNION)
>
> WORKING GROUP ON REFORM OF THE PATENT
> COOPERATION TREATY (PCT)
>
> Sixth Session
> Geneva, May 3 to 7, 2004
>
> COMMENTS BY CPTECH
> ON FOUR PROPOSALS FOR REFORM OF THE PCT
>
> INTRODUCTION
>
> 1. WIPO has several committees and working groups that
> seek greater harmonization of patent laws. CPTech asks
> that such harmonization address the legitimate concerns
> of consumers and the public, and more generally, the
> social aspects of the patent system. There are many
> issues that might be raised in creating a social agenda
> for the reform of the PCT. CPTech asks that work be
> undertaken in four particular areas. These four areas
> include (a) improved patent quality transparency, (b) a
> global framework for addressing problems of standard
> setting organizations, (c) standardized applications for
> requesting compulsory licenses, and (d) a procedure for
> waiving or reducing fees for "social patents."
>
> IMPROVED PATENT QUALITY TRANSPARENCY
>
> 2. When low quality patents (patents that do not meet
> appropriate standards of novelty or utility) are issued,
> government monopolies are created by mistake, business
> uncertainly is increased, and consumers and the public
> are harmed. The number of patent filings has grown
> considerably over the years, and the cost and complexity
> of examining those patents has increased sharply. In
> some quarters, the scope of patenting has broadened,
> including areas where patent examination may be
> particularly problematic. For these and other reasons
> enormous numbers of poor quality patents are issued.
>
> 3. In a series of bilateral trade agreements, the
> United States government is seeking to link the
> registration of medicines to patent status. That is, the
> regulator routinely blocks new drug registrations, and
> the generic entrant must litigate to establish she is not
> infringing a valid patent. This has the practical effect
> of decreasing the cost of enforcing poor quality patents
> and creating additional incentives for firms to obtain
> low quality or even fraudulent patents.
>
> 4. It is expensive to litigate patent quality. In
> countries with large markets, such as the United States,
> there may be sufficient economic incentives for
> competitors to bear the cost of overcoming poor quality
> patents. But in smaller market economies, like those of
> many developing countries, the costs of litigation are
> higher than the benefits of entry, and patents that
> should never have been issued will convey monopoly power.
>
> 5. The PCT could take some steps to address one issue
> relating to patent quality. The PCT could provide a
> mechanism to share information on disputes over patent
> quality. This should include administrative actions,
> such as patent reexaminations and private litigation
> between parties, including cases privately settled, or
> decided by the courts. The PCT could consider minimum
> standards for transparency of such disputes. Member
> countries should have access to more information on cases
> where patent claims have been challenged, including for
> example, pointers to the records of such proceedings,
> which should be open whenever possible.
>
> GLOBAL FRAMEWORK FOR ADDRESSING PROBLEMS OF STANDARD
> SETTING ORGANIZATIONS
>
> 6. Standard setting organizations have a legitimate
> interest in knowing before they adopt a standard if it
> will be free of patents, or if the patents relating to
> the standard will be licensed on reasonable terms.
> Increasingly this is a global problem. The Internet
> Engineering Task Force (IETF), the World Wide Web
> Consortium (w3c) and other bodies create global
> standards. They should know the entire global patent
> landscape before they act. At present there is no global
> framework that requires patent owners to disclose patents
> relevant to the standard. This is an area where the PCT
> could be very helpful.
>
> 7. In establishing standards for new technologies,
> protocols and platforms, it is generally the case that a
> standard setting organization (SSO) seeks disclosure of
> patent claims essential to the working of the relevant
> field of technology. If there exist relevant patent
> claims, the SSO will either (a) choose a different
> standard not encumbered by the patent, or (b) ask the
> patent owner to agree not to enforce existing or future
> patent claims against those implementing the standard, or
> (c) seek a commitment by the patent owner to license on
> reasonable and non-discriminatory (RAND) terms.
>
> 8. Patent owners are not currently required to disclose
> such patent claims, except in limited circumstances in
> some countries. For example, in the United States, there
> is an expectation that patent owners must sometimes
> disclose patent claims when they are members of the body
> adopting the standard. This obligation is inadequate,
> however, because it does not extend beyond the United
> States, or to patent owners who are not active in the
> standard setting process.
>
> 9. CPTech proposes the PCT add a new section that deals
> with the special problems of SSOs. Specifically, the PCT
> should create a system whereby at least some SSOs can
> notice standards, and ask for global disclosure of
> relevant patent claims. Further, the PCT could provide
> that failing to make such disclosures, the patent owner
> could not subsequently seek to enforce the claims against
> those implementing the standard.
>
> STANDARDIZED APPLICATIONS FOR REQUESTING COMPULSORY
> LICENSES
>
> 10. The WTO Doha Declaration on TRIPS and Public Health
> has increased public attention on the need to use the
> flexibilities of the TRIPS "to protect public health and,
> in particular, to promote access to medicines for all."
> A number of PCT members are not experienced in issuing
> compulsory licenses on patents, and many PCT members are
> fearful to act alone in issuing compulsory licenses.
>
> 11. CPTech asks the PCT to create a form and procedure
> whereby the public can ask for compulsory licenses on
> essential patents. The form and process should permit
> persons to set out the relevant countries where the
> compulsory license would be sought, the factual and
> public policy rationale for seeking the compulsory
> license, and the proposed terms of the compulsory
> license.
>
> 12. Each PCT member would receive the application for
> the compulsory license, and would be free to accept or
> reject the application, or to modify the proposed
> remedies.
>
> 13. WIPO should not limit the grounds under which a
> country could grant a compulsory license, or regulate the
> terms of compulsory licenses. But WIPO could provide a
> (non-exclusive) mechanism that if used, would provide
> benefits in terms of increased efficiency and
> transparency of the compulsory licensing process.
>
> WAIVING OR REDUCING FEES FOR "SOCIAL PATENTS"
>
> 14. For a variety of reasons, inventors may seek to
> license patents on terms that are designed to benefit the
> public. For example, patent owners may decide to license
> patents to essential medicines on terms that ensure
> access. Or an inventor may decide to patent an Internet
> protocol, not to commercially exploit the patent, but to
> ensure that the invention is freely available to others.
> For a variety of reasons, it may be better to obtain
> patents than to allow the invention to enter the public
> domain. For example, there may be a need for defensive
> patenting, in order to protect the public from "embrace
> and extend" efforts to privatize inventions that were
> intended to benefit the public.
>
> 15. In the area of copyright, there is growing use of
> licenses such as the Creative Commons
> (http://creativecommons.org/ ) licenses or the GNU
> General Public License
> (http://www.gnu.org/copyleft/gpl.html), that are designed
> to achieve social rather than commercial ends. The main
> reason this is feasible for copyright is that a copyright
> can be obtained without formal registration or the paying
> of fees. This is not true for patents.
>
> 16. Many commonwealth countries have a special "license
> of right" provision in patent laws that provide for lower
> patent fees as an incentive for the patent owner to give
> up exclusive rights to inventions. This concept could
> be expanded to include cases where the license to the
> patent primarily addresses social concerns.
>
> 17. CPTech asks that the PCT consider the creation of a
> new "social patent" category. In return for a complete
> waiver or discount of patent fees, the patent owner would
> agree license the patent in a manner that primarily
> provided social, rather than commercial benefits.
>
> 18. It is premature to determine the precise details of
> this proposal, but there are clearly many areas where
> this would be appropriate. Examples might include zero
> royalty licenses on patents used by standards
> organizations, special licenses to promote access to
> medicine or agricultural products, defensive patenting of
> genes, or other cases. It would be challenging and
> important for WIPO to entertain a discussion of this
> topic. Possible proposals would include the procedures
> to applying for the fee waivers or discounts, and the
> subject matters and terms of licenses that would qualify.
> CPTech intends to offer additional papers on this topic
> at a later date.
>
> --
> James Love, Director, Consumer Project on Technology
> http://www.cptech.org, mailto:james.love@cptech.org
> tel. +1.202.387.8030, mobile +1.202.361.3040
>
> --
> James Love
> http://www.cptech.org mailto:james.love@cptech.org
> mobile +1.202.361.3040
> _______________________________________________
> Ip-health mailing list
> Ip-health@lists.essential.org
> http://lists.essential.org/mailman/listinfo/ip-health
Regards,
--
Jeffrey A. Williams
Spokesman for INEGroup LLA. - (Over 134k members/stakeholders strong!)
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