[Random-bits] Four proposals for WIPO PCT Working Group on Reform
James Love
james.love@cptech.org
Tue May 4 02:54:02 2004
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
http://www.cptech.org mailto:james.love@cptech.org
mobile +1.202.361.3040