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The old regime has not kept pace on critical points: An International Patent
The crisis of the old regime can be seen, to start, in thedifficulty of efficiently applying patent criteria. In theseventeenth and eighteenth centuries, patent laws wereto provide incentives for bringing ‘‘new’’ technologies toa country.5 Moving into the nineteenth century, asresearch and development industrialised, new technolo-gies proliferated and became increasingly entangled with each other. It was then only normal to ask: justhow different from prior art should a technology be to Attorney, Los Angeles; Adjunct Faculty, University of attract patent rights, a routine twist in the state of the Southern California Law School: www.rcf.usc.edu/~pgeller art or some greater leap forward?6 Alongside novelty,non-obviousness or an inventive step began to berequired.7 We habitually speak of the ‘‘international patent sys- This is not the place to debate the theoretical merits tem’’. Let us rather call this the ‘‘old patent regime’’, for of diverse patent criteria.8 Here we rather address the the simple reason that it dates back to the Paris Conven- practical question: how does applying criteria of non- tion, already more than a century old. This old regime obviousness or of the inventive step make it difficult to is in crisis, as seen in the difficulties with which patent run patent offices efficiently? For example, it becomes offices are now processing filings. This article will here all the more difficult to make such delicate determina- undertake a thought-experiment, asking: how can the tions credibly in the increasingly dynamic contexts of Internet be used to help resolve the crisis?1 technological progress.9 It is also doubtful that suchdeterminations need to be made for all filings when onlya fraction of these filings concern commercially viable The Old Regime Out of Step
technologies.10 These problems become acute as filings The old patent regime has fallen out of step with tech- nological progress. Mankind started with trial-and-error tinkering and shifted to cumulative experi- mentation.2 In modern times, applied science hashelped to industrialise research and development.3 Para- The crisis also affects the transparency of the old doxically, as this progress has accelerated, it has precipi- regime. In the eighteenth century, patent applicants tated the patent crisis. Ever-increasing numbers of began specifying their inventions for public disclosure.11 ever-more complex filings are swamping patent offices.4 Such disclosures were to enhance the feedback of tech-nological information that promotes the ‘‘progress’’ ofthe ‘‘useful arts’’.12 Unfortunately, patent law itself can For their critiques of prior drafts, the author thanks Lionel Bently, UK Statute of Monopolies, Statutes at Large, 21 James 1, ch.
Charles Berman, Robert Donovan, William Kingston, Mark Lemley, 3, § 6 (1624). For background, see Jeremy Phillips, ‘‘The English Ejan Mackaay, Emil Markov, Mark Patterson, Jeremy Phillips, Jer- Patent as a Reward for Invention: The Importation of an Idea’’ ome Reichman, Dieter Stauder, and Toshiko Takenaka. The author, (1982) 3 Journal of Legal History 71.
coming out of a field free of formalities, takes full and sole responsibil- See Brad Sherman and Lionel Bently, The Making of Modern ity for both his opinions and errors as a patent dilettante. All websites Intellectual Property Law: The British Experience 1760–1911 referenced here were visited before the middle of 2003. Paul Edward See Hans Ullrich, Standards of Patentability for European Sundry projects to meet the crisis are under study. For exam- Inventions: Should an Inventive Step Advance the Art? (1977).
ples, see ‘‘WIPO Patent Agenda: Options for Development of For critical analyses, see Dan Burk and Mark A. Lemley, ‘‘Is the International Patent System’’, Doc. A/37/6, August 19, 2002 Patent Law Technology-Specific?’’ (2002) 17 Berkeley Technology www.wipo.int/eng/document/govbody/wo_gb_ab/pdf/a37_6.pdf; US and Law Journal 1155; John Barton, ‘‘Reforming the Patent Patent and Trademark Office, ‘‘The 21st Century Strategic System’’ (2000) 287 Science 1933.
Plan’’, June 3, 2002 www1.uspto.gov/web/offices/com/strat2001/ For data on patent procedures in these contexts, see John R.
Allison and Mark A. Lemley, ‘‘Empirical Evidence on the Valid- For overviews, see Arnold Pacey, Technology in World Civiliza- ity of Litigated Patents’’ (1998) 26 American Intellectual Property tion: A Thousand-Year History (1990); Paul A. David, ‘‘From Law Association Quarterly Journal 185; John L. King, ‘‘Patent Keeping ‘Nature’s Secrets’ to the Institutionalization of ‘Open Examination Procedures as Inputs to Patent Quality’’, The Science’ ’’, Draft of March 23, 2001 www-econ.stanford.edu/ National Academies, STEP Conference on New Research on the Operation and Effects of the Patent System, October 22, For further analysis, see William Kingston, Innovation: the 2001, www7.nationalacademies.org/step/King_paper.doc.
Creative Impulse in Human Progress (1977), pp.91–97; for exam- For details, see Mark A. Lemley, ‘‘Rational Ignorance at the ples, see Charles Bazerman, The Languages of Edison’s Light Patent Office’’ (2001) 95 Northwestern University Law Review urgen G. Backhaus, ed., The Economics of Science Policy: An Analysis of the Althoff System (1993) 20 Journal of Economic For background, see John N. Adams and Gwen Averly, ‘‘The Patent Specification: The Role of Liardet v Johnson’’ For details, see ‘‘WIPO Patent Agenda’’, n.1 above, at (1986) 7 Journal of Legal History 156.
pp.2–4; Setsuko Asami, ‘‘A View toward the Global Patent US Constitution, art.I, §8, cl.8. For one Enlightenment —Mutual Exploitation of Examination Results’’ (2002) 27 view, see Thomas Jefferson, Letter to Isaac McPherson, August A.I.P.P.I. (Japan) 12 at pp.14–16.
13, 1813, http://odur.let.rug.nl/~usa/P/tj3/writings/brf/jefl220.htm.
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inhibit disclosures outside filings: patents turn on prior- ity, but pre-filing publications are disfavoured in that In the old regime, patent offices take filings, hold them they might undercut such priority.13 Furthermore, pat- locally in closed files for some time, and, typically on ent offices do not themselves disclose innovations successful examination, grant patents effective within quickly: once a patent application is filed, it normally national territories. The interim regime would overlay remains eclipsed under a veil of confidentiality, until is all such systems, both the first-to-invent system and first-to-file systems, with an international first-to-post Different parties often have diverging interests in transparency.15 Lawyers have to maximise protection, Research and development set the pace for the whether by patents or trade secrets. Research directors interim regime. Research results can now be disclosed have to look to the prospective income from innova- via the World Wide Web on globally distributed data- tions. Researchers often gain professional advancement bases. For example, in the Human Genome Project, in making their results public. Accordingly, to avoid the new information is posted at local websites tied together forfeiture of priority through disclosure, lawyers all too into such a global database.21 In the interim regime, often have to place researchers in the dilemma: either new technologies would be posted at any of a number of patent or publish!16 Some patent laws have instituted websites that, administered by designated search legal devices for dulling the horns of this dilemma, such authorities, would be linked to form a global database.
as grace periods and provisional applications.17 But The postings would be dated and accessible on the such exceptions only highlight the general rules of pri- World Wide Web as soon as they were made.22 ority and confidentiality that tend to slow down thefeedback of innovations into research.18 Patent offices themselves face a related bind as they are increasingly beset with filings. Indeed, these officesfind their vocation as current and complete public The interim regime would require linking and program- libraries of innovations put into question by the pro- ming local patent databases into a globally distributed liferation of the very technologies that they are to make database to facilitate global searches. Only on the transparent.19 In particular, they risk being caught request of the poster, coupled with appropriately mod- between delays in processing patent applications and est fees, would a search authority examine a posting on obligations to open patent files in 18 months. Some the global database.23 If the data so warranted, the solution is called for to defuse these pressures.
search authority would issue an ‘‘interim certificate’’that would provide evidence of the completeness of theposting and of the novelty of the posted technology.
The Interim Regime: Some Proposals
Global standards would govern the form of postings.
Such standards would be designed to allow the indexing To distinguish the old patent regime from what is pro- and searching of technologies, including prior art, posed here, call the latter the ‘‘interim regime’’. For the within the global patent database.24 Meeting the stan- sake of feasibility, we shall try to dovetail the interim dards would facilitate both the certification contem- regime with the Patent Cooperation Treaty (‘‘PCT’’) plated here and private searches, for example, to gather evidence for opposing rights asserted in disputed mat- For an example, see the ‘‘Allopurinol’’ decision, Dr Georg ters. An interim certificate would, for courts and other Henning GmbH v The Wellcome Foundation Ltd, Federal Court of decision-makers, provide evidence that a posting was Justice (Germany), October 15, 1974, [1975] G.R.U.R. 131, in formally complete. Of course, such certification could English translation in (1976) 7 I.I.C. 105.
not a priori assure that the posted technology would For examples, see Patent Cooperation Treaty, Arts 21, 30; meet real-world criteria such as enablement. But a cer- European Patent Convention, art.93; Japan, Law no.121 of April13, 1959, as last amended by Law no. 220 of December 22, tificate of complete disclosure could be weighed as evi- For further analysis, see Clarisa Long, ‘‘The dissonance of The interim certificate would also constitute prima scientific and legal norms’’ (1999) 13 Social Epistemology 165.
facie evidence of the global novelty of a technology at For a graphic formulation, see European Patent Office, ‘‘The seven deadly sins of the inventor: 2. The invention is notkept secret until the date of filing’’, www.european-patent-office For examples, see www.ncbi.nlm.nih.gov and www.ensembl For an international example, see Paris Convention for the Such disclosure would moot the need for grace periods, Protection of Industrial Property, Art.11 (Stockholm Act); for a provisional filings, etc. For a critical analysis, see Sven J. R.
national example, see United States, Patent Act, 35 U.S.C.
Bostyn, ‘‘International Harmonization of the Patent System’’ (2002) 27 A.I.P.P.I. (Japan) 310 at pp.385–394.
For examples, see E.G. Campbell, ‘‘Data withholding in For parallels, see European Patent Convention, Arts 90–96; academic genetics’’ (2002) 287 Journal of the American Medical Japan, Law no. 121 of April 13, 1959, §§48bis–48ter.
Association 473; NHGRI Policy Regarding Intellectual Property For information on the International Patent Classification of Human Genomic Sequence, April 9, 1996, www.genome.gov/ and the Trilateral Concurrent Search Project, moving toward such standards, see respectively www.wipo.int/classifications/ Note that inefficiencies in the patent process, and resulting en/ipc/preface.htm and www.jpo.go.jp/saikine/tws/twsindex.htm.
costs, sometimes lead enterprises to engage in so-called defen- In any event, controversial requirements, for example, for sive publication, which outflanks patent offices as libraries of best-mode disclosures, could be left out. For analysis, see technologies. For further analysis, see text accompanying n.71 Toshiko Takenaka, ‘‘The Best Patent Practice or Mere Com- promise: An Overview of the Current Draft of the Substantive For examples, see Asami, n.4 above, at pp.16–18, 20–25; Patent Law Treaty and a Proposal for a ‘First to Invent’ Excep- Charles Berman, ‘‘A global patent solution comes into view’’, tion for Domestic Applicants’’ (2003) 11 Texas Intellectual Prop- Managing Intellectual Property, October 1999, p.70.
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posting. To expedite inquiry, it would not be asked relevantly useful elements. The interim regime would whether elements of any prior technology or of the be more like a game of poker that forces one to put all posted technology would have implicitly prompted a one’s cards on the table at once. Recall that global nov- hypothetical person of ordinary skill in the art to draw elty would be certified on the basis of newly disclosed any inference for or against novelty. It would only be elements of a technology.32 Thus the chances of assur- necessary to compare the posting to prior art world- ing novelty would go up as more elements were wide, element by element, to see whether any new ele- ment appeared against the background of ‘‘standards How to take account, in the interim regime, of such for what constitutes prior art [that] are generally already rapid and full disclosure? To understand the remedies extremely close’’.26 For reasons already indicated, nota- needed to this end, we have to look at a larger context.
bly to avoid complicating examinations, the interim Patent law is just one branch within the entire law of regime would not call for any finding of non-obvious- industrial property that protects technologies. Patent law admittedly provides the strongest remedies in the Those readers who smell a fine French perfume waft- field, but these remedies only cover selected technolo- ing about the interim regime have good noses. The gies. It is not possible to reform patent law system- classic French patent system, born in the 1790s, dated atically without taking into account the rest of this law and acknowledged the receipt of filings, but with the of industrial property. For example, a party may now caveat that the ‘‘Government . . . does not intend to rely on the law of trade secrets to protect a secret tech- guarantee in any way property in, the merit of, or the nology in initially applying for a patent, but that protec- success of any invention’’.28 This French system, grant- tion lapses once a patent application has been laid open ing no presumptively valid patents, left it up to the to the public. Some readers have surely already asked courts to dispose of infringement and other disputed themselves: what would fill in for such trade-secret pro- issues, and litigation was remarkably infrequent.29 What tection in the interim regime, with its global disclosure we have chosen to call the ‘‘old regime’’ was interna- tionally based on the Paris Convention of 1883, and its Consider so-called hybrid industrial-property rights purpose was to co-ordinate national systems for grant- in sub-patentable technologies. Since the nineteenth ing patents. The interim regime proposed here would century, such rights have been granted in designs and itself grant no patents, but rather co-ordinate data to utility models. In the twentieth century, they have been help deal with infringement and disputes worldwide.
instituted in such diverse subject-matters as integrated-circuit designs and plant varieties.33 Hybrid rights nor-mally arise in novel technologies that do not necessarily The overall scope and time-scale for remedies have to be inventive; they generally have shorter terms To understand these proposals, consider the stakes of than do patents; and they call for injunctive and com- the old regime. This regime puts the patent owner in a pensatory relief. If such protection covers sub-patent- position to win the entire jackpot of royalties to be able technologies, a fortiori it should cover a technology earned in a local jurisdiction for a given invention.
which, posted with global novelty in the interim patent Innovators who do not obtain patents may well be cut regime, displays a modicum of utility. On that basis, a out of these stakes: most notably, nothing may be left safety-net of remedies, substituting for trade-secret pro- for researchers whose publicly disclosed results might tection, could be provided to protect the technology, have helped patentees to win jackpots. Nor may much even across borders. Such a safety-net could extend for be left for researchers whose comparable technologies a short term, say, five years from posting with novelty, without prejudice to the full patent term of 20 This old, winner-take-all regime can thus be inequi- table. Furthermore, as already indicated, it can dis- Some current laws of industrial property are illus- courage the rapid disclosure of research results.31 Such trative. Cumulatively with their patent systems, some counter-productive consequences of the old regime countries, such as Germany, have instituted utility- could be aggravated if its stakes were unconditionally model or like systems.35 While patent systems take time globalised. The interim regime would start avoiding to process filings, utility-model and like systems grant such consequences at the level of posting. The old pat-ent regime is comparable to a game of poker, in whichclaimants first bet with their cards largely hidden.
Claimants file applications that normally remain con- See text accompanying nn.26–27 above.
fidential for some time, and not all filings include all For a seminal analysis, see J.H. Reichman, ‘‘Legal Hybrids Between the Patent and Copyright Paradigms’’ (1994) 94Columbia Law Review 2432, and ‘‘Charting the Collapse of the ‘‘WIPO Patent Agenda’’, n.1 above, at p.6.
Patent-Copyright Dichotomy: Premises for a Restructured See text accompanying nn.5–10 above.
International Intellectual Property Regime’’ (1995) 13 Cordozo Quoted in Jean Foyer and Michel Vivant, Le droit des brevets Arts & Entertainment Law Journal 475.
(1991), p.28 (author’s translation).
There is nothing magic about this number, which is pro- posed to provide interim protection while local patent filings are For another analysis, see John S. Leibovitz, ‘‘Inventing a processed. Note that a PCT application, laid open 18 months Nonexclusive Patent System’’ (2002) 111 Yale Law Journal from a Paris-priority filing date, need not lead to some national filings for up to 30 months from that date, possibly leaving the See text accompanying nn.11–19 above. For further analy- technology in question without trade-secret protection for some sis, see Mark R. Patterson, ‘‘Patent Races with No Entrants’’, time. See Patent Cooperation Treaty, Arts 21–23.
Fordham University School of Law, Research Paper 22, October Germany, Utility Model Law of August 28, 1986, as last 2002 http://papers.ssrn.com/paper.taf?abstract_id=336220.
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certificates either on filing or on an expedited examina- much as some prior users may in some first-to-file sys- tion. Thus, ‘‘[w]hen an applicant fears [that] his inven- tems.41 By the same token, improvements that attract tion may not meet the patentability requirements or patent rights should not necessarily be enjoined.42 when he requires protection until [the] granting of a This approach would affect burdens of proof. A patent, the possibility of ‘falling back’ on utility model poster could give its own evidence of novelty, for exam- protection provides a useful safety-net for him’’.36 Sim- ple, its own search results. Or the poster could expedite ilarly, protection under the global system of the interim matters, notably in applying for a preliminary injunc- regime would continue during a shorter term, while tion, by presenting an interim certificate. In response, a protection under purely local patent systems would, prior contributor could offer evidence of having pre- upon proof of requisites like non-obviousness or inven- viously made public a novel element that is incorpo- tive step, be available for the longer term.
rated into the posted technology. That prior contributorcould then, absent proof to the contrary, defend againstan injunction limiting its uses of its novel element, but not against an injunction stopping the use of the entire Injunctions give ‘‘industrial property’’ the force of prop- technology at issue. A later contributor could, on proof erty. They exclude others from that slice of the market of its improvement, defend against an injunction limit- which the law reserves to the property owner. In theory, it remains controversial how far injunctive and related These defences would lie only against injunctions, relief should extend and where solely compensatory lia- but not against compensatory awards. Of course, bility should be imposed.37 In practice, in the interim whether or not one is a contributor to a technology, one regime, this article proposes a bifurcated approach: must pay to use others’ innovations. The first poster of courts would enjoin and otherwise sanction misappro- a technology could sue later contributors to that tech- priation, while quasi-arbitral instances would settle roy- nology and, in theory, in the resulting judicial proceed- ing, hold such a contributor financially liable for using Distinguish between a duplicative infringer, on the what the poster had innovated. However, as we shall one hand, and a contributor to a technology, on the now argue, litigation is not necessarily the most prac- other.38 By a ‘‘duplicative infringer’’ is meant a party tical arena for dealing with such monetary issues.
who makes, utilises, or markets a protected technology Indeed, we shall have to ask: how can we co-ordinate without developing any element of the technology or defences to judicial relief with procedures for settling without improving on that technology. By ‘‘contribu- tor’’ 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 sub-sequently improved on that technology. The interim We thus come to the other task of our bifurcated reme- regime would entitle the first poster of a technology to dies: shepherding contributors to a technology into set- commence judicial proceedings for infringement, but it tling their disputes. Technologies tend to form would allow for injunctive relief only against duplicative ‘‘thickets’’ in which technological elements are so tightly intertwined that one or a number of such elements can- Ideally, injunctions and other sanctions should not not be properly exploited without licensing others. For impede the processes of innovation that patent law is to this reason and others, patent markets sometimes break promote. Of course, imposing injunctions only against down, for example, when a claimant relative to a key duplicative infringers would not stifle new technological element of a technology holds out for unacceptable elements for the simple reason that, by definition, such infringers bring forth no such elements. We have Dispute settlement would help to forestall such mar- already touched on how present patent rules may dis- ket breakdowns. It should also help to level the playing courage contributors to technologies from making their field between contributors, who might not all equally research results public40; the threat of injunctionsagainst contributors could keep innovations off the mar-ket. Previously contributing parties to a field of technol- For examples, see France, Law no. 92–597 of July 1, 1992, on the Intellectual Property Code, as last amended by Law no.
ogy should therefore be allowed to continue their uses, 96–1106 of December 18, 1996, art.L. 613–7; Japan, Law no.
121 of April 13, 1959, §79. For further analysis, see John Neu- Michael Kern, ‘‘Towards a European Utility Model Law’’ kom, ‘‘A Prior Use Right for the Community Patent Conven- (1994) 25 I.I.C. 627 at pp.644–645.
For a framework of analysis, see Guido Calebresi and A.
For an example of US case law with comparable effects, see Douglas Melamed, ‘‘Property Rules, Liability Rules, and Inal- Robert P. Merges, ‘‘Intellectual Property Rights and Bargaining ienability: One View of the Cathedral’’ (1972) 85 Harvard Law Breakdown: The Case of Blocking Patents’’ (1994) 62 Tennessee Law Review 75 at pp.91–94, 102–105. For an example of a For a comparable analysis in copyright law, see Paul statutory licence to comparable effect, see Japan, Law no. 121 of Edward Geller, ‘‘Hiroshige v Van Gogh: Resolving the Dilemma of Copyright Scope in Remedying Infringement’’ (1998) 46 See text accompanying nn.46–47 below.
Journal of the Copyright Society of the USA 39.
For examples, see Michael A. Heller and Rebecca Eisen- In egregious cases of duplicative infringement, injunctions berg, ‘‘Can Patents Deter Innovation? The Anticommons in Bio- and compensatory awards could be supplemented with deterrent medical Research’’ (1998) 280 Science 698; Carl Shapiro, monetary awards. For a comparative analysis, see Gunnar W.G.
‘‘Navigating the Patent Thicket: Cross Licenses, Patent Pools, Karnell, ‘‘Gedanken zur Bemessung von Schadensersatzanspr ¨ and Standard-Setting’’, in Adam B. Jaffe, Josh Lerner, and Stern chen bei Patentverletzungen’’ [1996] G.R.U.R. Int. 335.
Scott, eds., Innovation Policy and the Economy (2001), Vol.1, See text accompanying nn.11–19 above.
p.119, also at http://faculty.haas.berkeley.edu/shapiro/thicket.pdf.
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afford litigation.45 To commence a proceeding to settle up the machinery necessary to settle royalty disputes in royalty disputes, a first poster or other contributor to a technology could specifically serve a notice on still other Assuming a sufficient infrastructure, what treaty pro- contributors to that technology. As a further hedge visions, with adequate implementation, would assure against hold-outs, a general notice could be posted the proposed legal effects? A simplified PCT option worldwide to call for the settlement of all royalty dis- could result in certifying the completeness of a posting putes relative to the technology at issue. On appropriate and the novelty of the posted technology, as well as in notice, the other contributors would have a reasonable fixing a priority date.48 Note that the interim regime, time to respond and enter dispute settlement. Contrib- not making any patent grant, would not predicate the utors who fail to enter the proceeding could be made to validity of any such grant, so that the issue of validity suffer estoppel effects. For example, they could be pre- would not trouble cross-border enforcement.49 Accord- cluded from invoking contributors’ defences to judicial ingly, treaty language could be adapted from general relief.46 In addition, they could be precluded from chal- Brussels provisions to assure that an injunction, once lenging any dispute-settlement award.
issued by a court in one jurisdiction against duplicative Courts and dispute-settlement panels could shepherd infringement that crosses borders, would be enforced contributors through this process. For example, adjudi- by courts in other jurisdictions.50 Treaty language cating a suit against a party who has entered but then adapted from the New York Convention could author- obstructed dispute settlement, a court could respond to ise courts to enforce the awards of dispute-settlement that party’s bad faith by withdrawing its contributor’s panels.51 Other provisions could co-ordinate judicial defences to judicially granted injunctions; for good- faith participants, the court could suspend imposingmonetary awards pending the outcome of dispute set- tlement. By the same token, a dispute-settlement panelcould require a bond to secure eventually awarded roy- Assume that treaty and statutory provisions imple- alties, or it could deem its own requirement of such a mented the interim regime. What consequences would bond to be satisfied by a bond posted in a prior pending continue to follow from locally granted patents? The interim regime would only overlay the old regime with Dispute settlement could include claims in both sub- remedies triggered by interim certificates. Thus, on patentable and patentable technologies. Imagine, for points where international provisions for the interim example, the developer of a new but sub-patentable regime, or statutes implementing these provisions, were spring used in a pair of mouse-traps attracting patent not expressly dispositive, national and regional patent rights, the prior trap being improved in the later one.
laws and grants would remain the default predicates of The developer of the spring could seek royalties for each protection. Full terms and remedies, as well as limita- inventor’s use of the spring; by the same token, the tions and defences, would continue in effect for local inventor of the prior mouse-trap could seek royalties patents on the respective territories covered by such from the inventor of the improved mouse-trap for use of patents. For example, an exclusion from patentable its prior innovations. Absent agreement between con- subject matter under a local law would preclude full tributors, the dispute-settlement panel could set royal- patent protection on the territory governed by that ties for the use of all pertinent elements.47 A technology which has been globally posted in the interim regime could represent prior art relative to sub- Transitional Issues
sequent filings in local patent systems. At the same time, Any interim regime raises transitional issues. To follow the prima facie novelty of such a globally posted tech- through on our proposals, we now have to analyse such nology could eventually fail to overcome the novelty of issues and offer solutions. We must ask: how could the a technology which was the subject-matter of a filing old patent regime best be enhanced, if not superseded,by the interim regime? Quaere whether a new rule of global priority should be fashioned more appropriately for the new world of instanta- neously global internet postings? See text accompanying n.54below. The one-year Paris priority period was, of course, devel- The interim regime could be partially implemented oped for the old world of delayed cross-border filings. See Paris without any change in treaty or statutory law. To start, Convention, Art.4; Patent Cooperation Treaty, Art.8.
the computerisation of patent files could be increasingly For a comparative analysis, see Cl´audio R. Barbosa, ‘‘From Brussels to The Hague—The Ongoing Process Towards Effec- focused on integrating these files, as well as the postings tive Multinational Patent Enforcement’’ (2001) 32 I.I.C. 729.
of new technologies, within a globally distributed data- That is, Arts 31 et seq., not Art.22(4), of the Council Reg- base. In addition, WIPO or other agencies could build ulation 44/2001 ([2001] O.J. L12), which supersedes the Brus-sels Convention on Jurisdiction and the Enforcement ofJudgments in Civil and Commercial Matters of September 27, For analysis and data, see William Kingston, ‘‘The Case for Compulsory Arbitration: Empirical Analysis’’ [2000] E.I.P.R.
That is, the Convention on the Recognition and Enforce- See text accompanying nn.41–43 above.
See text accompanying nn.40–47 above.
For criteria for setting royalties, see J. H. Reichman, ‘‘Of For an example, see Harvard College v Canada (Commis- Green Tulips and Legal Kudzu: Repackaging Rights in Sub- sioner of Patents), Supreme Court (Canada), December 5, 2002, patentable Innovation’’ (2000) 53 Vanderbilt Law Review 1744 at Cite no. 2002 SCC 76, File no. 28155, www.lexum.umontreal.ca/ csc-scc/en/rec/html/harvard.en.html.
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previously made in a local system, even though the post- ‘‘strengthening co-operation between the signatories to ing was made before that filing was laid open to the the [European Patent] Convention’’.62 public.54 This result would not necessarily undercut the The interim regime could similarly harmonise judge- safety-net of injunctive and related relief that is contem- made law. Consider key terms of patent law, for exam- plated here to protect a novel technology for five years ple, ‘‘abstract ideas’’, ‘‘scientific theories’’, ‘‘mental from posting. Such protection is based on the availabil- steps’’, ‘‘technical character’’, ‘‘inventive step’’, etc. The ity of comparable remedies for sub-patentable technolo- difficulties surrounding these notions betray uncertain- gies, and such remedies do not everywhere predicate ties about basic patent distinctions and criteria that lead novelty in any absolute sense.55 For example, rights in into the conceptual black-hole of the patent crisis.
industrial designs typically call for novelty of the designs There is no assurance that either treaty-makers or legis- to be protected, but that novelty may relate only to what lators can dissipate such uncertainties with purely ver- bal formulae.63 It is submitted that the courts and Ultimately, we have to question the sense of main- dispute-settlement panels would be best left to their taining complicated registration systems for designs, own devices on such matters. With time and experi- utility models, and other sub-patentable technologies.
mentation, their analyses could well converge on appro- The interim regime proposed here for patents could be eventually co-ordinated with a comparable first-to-post Return to the practical exigencies bearing on a court system adapted to sub-patentable technologies. Articu- faced with a petition for a preliminary injunction in a lating rights in patentable and sub-patentable technolo- case of cross-border infringement. In this quick-order gies into one regime would help dispute-settlement kitchen, the heat is likely to be intense: there might be panels to determine royalties across any given field hard evidence of infringement in multiple jurisdictions, where both types of rights come into play.57 but only cursory showings of the laws applicable in allthese jurisdictions under the facts of the case.65 In exer-cising discretion to fashion remedies on the spot, judges could well base relief on harmonised views of all appli- Global uniformity among patent laws has become a cable laws, if only by presuming these laws to conform holy grail.58 The interim regime would fall short of such to shared regional or international standards.66 Turn to uniformity: it would decentralise procedures among royalties: dispute-settlement panels would have the different patent offices and leave the resolution of sub- chance to harmonise standards on point in decisions stantive issues to different courts and dispute-settle- that, unlike arbitration decisions, need not be confiden- ment panels. It would represent a compromise with tial. The panels’ jurisprudence could then be subject to regard to the question: would global uniformity under- critical refinement by legal scholars and, eventually, by cut local competence or experimentation?59 How much harmonisation could nonetheless be expected? European experience in the domain of pat- ents is edifying in this regard. The Europeans region-alised patent procedures and directed courts to In what language or languages would the interim regime harmonise their substantive readings of patent laws and work? A poster could be required to translate basic claims.60 Nonetheless, a decade ago, different Europeancourts clashed in reading patent claims in virtually iden- Pharmacia Corporation v Merck & Co Inc, Court of Appeal tical cases because, ostensibly, of entrenched jurispru- (Civil Division) (United Kingdom), December 14, 2001, [2001] dential differences.61 Recent case law now takes better EWCA Civ 1610, para.159 (Arden L.J.).
account of the need to interpret patents with an eye to 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 That is, defensively, the global posting would not neces- Japanese Patent System with Its U.S. Counterpart Through sarily serve as prior art for a previously made but undisclosed Judge-Made Law: Interaction Between Japanese and U.S. Case filing which, offensively, could be asserted in some systems Law Developments’’ (1998) 7 Pacific Rim Law & Policy Journal against the posting. For an example, see US Patent Act, 35 249; Graeme B. Dinwoodie, ‘‘International Intellectual Property U.S.C. §102(e). Some account has to be taken of Paris priority Litigation: A Vehicle for Resurgent Comparativist Thought?’’ (2001) 49 American Journal of Comparative Law 429.
See text accompanying nn.33–36 above.
On the choice of laws in such cases, see Paul Edward Gel- For an example, see Council Regulation 6/2002, Art.5, ler, ‘‘International Intellectual Property, Conflicts of Laws, and Internet Remedies’’ [2000] E.I.P.R. 125.
For an example, see Applied Research Systems Holding NV v For diverse points of view, see ‘‘WIPO Patent Agenda’’, n.1 Organon, Court of Appeals, The Hague (Netherlands), February above, at pp.5–6; Charles Berman, ‘‘Moving the patent process 3, 1994, in English translation in (1997) 28 I.I.C. 558. Note that into the 21st century’’, Managing Intellectual Property, March preliminary injunctions, which would be available only against duplicative infringement under the interim regime, would not For a critical analysis, see John F. Duffy, ‘‘Harmony and typically present many issues, such as equivalents or validity, on Diversity in Global Patent Law’’ (2002) 17 Berkeley Technology which it would be difficult to harmonise laws. See text accom- For background, see Dieter Stauder, ‘‘The History of In this regard, the interim regime would follow the regime Art.69(1) EPC and Art.8(3) Strasbourg Convention on the for settling disputes concerning domain names. For further anal- Extent of Patent Protection’’ (1992) 23 I.I.C. 311.
ysis, see Laurence R. Helfer and Graeme B. Dinwoodie, For this analysis, see Brad Sherman, ‘‘Patent Claim Inter- ‘‘Designing Non-National Systems: The Case of the Uniform pretation: The Impact of the Protocol on Interpretation’’ (1991) Domain Name Dispute Resolution Policy’’ (2001) 43 William [2003] E.I.P.R. ISSUE 11 SWEET & MAXWELL LIMITED [AND CONTRIBUTORS] GELLER: AN INTERNATIONAL PATENT UTOPIA?: [2003] E.I.P.R. 521
information into a linguistically neutral code and to Conclusion
provide an abstract in a commonly used language. This Why would claimants use the interim regime? Consider information and abstract would give searchers some the phenomenon of defensive publication. Given the basis for deciding whether to have the entire posting costs of patenting in the old regime, many enterprises reveal their technologies to constitute prior art that pre- Would the absence of a formal patent grant in the cludes their competitors from patenting.71 By posting interim regime lead to increased litigation? The interim under the interim regime, innovators could accomplish regime would only facilitate suing for injunctive relief in the same purpose, while they would at the same time a small range of cases, those against duplicative infring- hedge their bets with regard to the prospects of protec- ers. The fact that an enterprise ran the risk of incurring tion. They would have recourse to remedies to defend sanctions for misappropriating a technology without their technologies globally and to procedures to settle due consent would speak well of the commercial viabil- royalty disputes expeditiously, and they would preserve ity of the technology. In order to exploit such commer- their chances to obtain local patents. With increased cial promise expeditiously, contributors to a technology disclosures, the public would benefit from the more would do well to compromise their differences. The rapid and massive feedback of innovations into interim regime would then prompt the contributors to agree among themselves while shepherding them into But there is a deeper reason for our thought-experi- ment than providing new, more global options for inno- Any interim regime leaves loose ends. For example, vators. This article is intended to provoke reflection how would postings, some inevitably flawed or over- about how to prepare for an increasingly volatile future taken by a poster’s further research, be corrected or in the field of patents. Whenever we have written ‘‘the amended? Some readers might be tempted to take such old regime’’ above, we have thought: the political ancien loose ends as hooks onto which to add complications to r´egime on the eve of the French Revolution. The old the foregoing proposals. It inevitably takes time and patent regime now faces, as that ancien r´egime once did, costs money to deal with complexity, for example, to the threat that its constituents might simply refuse to specify references to prior art or to negotiate amend- pay the inexorably rising costs of all its long-held for- ments. Such further procedures, calling for higher fees, malities. However utopian, our experiment seems more could remain as add-ons that particular search author- realistic than attempts to globalise all the old, compli- ities could offer at their discretion. It could remain open to third parties to post oppositions that would be linkedto posted technologies. Anyone sued or called into dis-pute settlement could then easily find and invoke theseoppositions.70 A posting could be required to be in a designated language or in one of a number of designated languages. See Patent Coop-eration Treaty, Art.3(4)(i); Regulations under the PCT, r.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 Elec-tronics’’ (1997) 39 California Management Review 8.
For one source, see https://my.ip.com/?ipcomAffiliate= Since the interim regime includes no patent grant, it does derwent. For a more expansive analysis, see Oren Bar-Gill and not give rise to problems of pre-grant and post-grant opposi- Gideon Parchomovsky, ‘‘The Value of Giving Away Secrets’’, tions. For further analysis, see Jay P. Kesan, ‘‘Carrots and Sticks Harvard Law School, Law & Economics Discussion Paper 417, to Create a Better Patent System’’ (2002) 17 Berkeley Technology April 2003 http://papers.ssrn.com/paper.taf?abstract_id=404260 and www.law.harvard.edu/programs/olin_center/.
[2003] E.I.P.R. ISSUE 11 SWEET & MAXWELL LIMITED [AND CONTRIBUTORS]

Source: http://ladoc.ffii.fr/Geller-International_Patent_Utopia.pdf