The National Academy of Sciences has completed a four-year study of the patent system. The NAS Report contains an impressive and comprehensive set of recommendations for reforming the U.S. patent system. The Report contains proposals that, if enacted into law, would change the patent statute in very significant ways. AIPLA has taken similar positions with regard to needed changes to U.S. patent laws. Thus, AIPLA commends the NAS effort and believes that the NAS Report deserves the most careful consideration by all the constituencies interested in the U.S. patent system. In addition, the Report merits serious consideration by the Congress. In brief, AIPLA endorses immediate and concrete efforts to see that the major NAS Report recommendations for statutory changes to U.S. patent laws are enacted into law.
AIPLA endorses the main thrust of the NAS Report in each of the seven areas where recommendations have been made:
The patent system should remain open-ended, unitary and flexible so that, wherever “progress in the useful arts” might lead mankind, a vigorous and effective patent system can follow. No changes in the existing patent law are needed to achieve this end. Neither the AIPLA nor the NAS Report endorses any changes to the patent law in this regard.
A core feature of the patent laws should be a set of vigorously applied criteria for patentability, and AIPLA agrees with the NAS Report that the non-obviousness standard should be vigorously applied. In this respect, however, non-obviousness is no different from the other patentability requirements; all must operate with vigor for the patent law to promote progress in the useful arts. That said, AIPLA does not agree that reinvigoration of the non-obviousness law is now necessary. Rather, what is needed is a consistent application of all the requirements for patent validity. Achieving this consistency depends in part upon a U.S. Patent and Trademark Office with sufficient resources and capabilities to guarantee that this can happen. The NAS Report does not recommend any statutory change to the legal standard for assessing non-obviousness and AIPLA concurs that none is needed.
Decisions of patent examiners to issue patents should be subject to an open review process in which the public can participate. AIPLA supports the conclusion of the NAS Report that an effective post-grant opposition system needs to be instituted. However, based upon global experience with such proceedings, a post-grant opposition mechanism must be carefully constructed, adequately resourced by the U.S. Patent and Trademark Office, and appropriately constrained. It should achieve a balance between the interests of the patent owner in a final determination of patent property rights and the interests of the public in the prompt elimination of erroneously granted patents.
A predicate to the more effectively functioning patent system is a more effectively functioning U.S. Patent and Trademark Office. A key to a more effective Office lies in adequate funding levels, an improved mechanism for financing the operations of the Office, and a more effective business planning process. AIPLA wholeheartedly endorses the NAS Report recommendation that the Office’s capabilities must be strengthened. Doing so depends upon funding and financing reforms that will make possible effective business planning. Creating and enhancing capabilities of the Office is essential to the successful implementation of a new post-grant opposition procedure.
Scientific, research, or other experimental activities that allow a patented invention to be better understood, more fully developed, or further advanced should be exempt from patent infringement. Codifying such an exemption as recommended by the NAS Report, would remove the uncertainty that now exists over the manner in which a patented invention can be used to better understand and/or extend what is patented.
The cost of patent litigation, which itself renders many patents de facto unenforceable, should be addressed through statutory changes recommended by the NAS Report. These changes include elimination, limitation or modification of current provisions of the patent law as they relate to willful infringement, inequitable conduct, and the requirement to disclose the inventor’s contemplated best mode. While these changes may appear controversial to some inside and outside the IP community, radical changes in the patent law are needed to control the costs of all aspects of filing, procuring and enforcing patents.
Substantive U.S. patent law should be radically simplified in the manner proposed by the NAS Report. AIPLA supports adoption of a “best practices” approach to modernizing the U.S. patent system. These include adoption of a first-inventor-tofile system, repeal of “loss of right to patent” provisions, ending the exclusions to 18-month publication of pending patent applications, and removal of the “best mode” requirement. Such changes to U.S. patent laws would also have the salutary effect of further harmonizing U.S. patent laws with those of other advanced industrialized countries. The NAS Report makes a persuasive case for the need to change U.S. patent laws and to seek patent law harmonization internationally.
As a final point, AIPLA supports taking a holistic and synergistic look at the recommendations contained in the NAS Report and the impact they would have on the U.S. patent system. The major statutory changes recommended in the NAS Report – instituting the post-grant opposition proceedings, eliminating subjective elements in patent litigation, and adopting harmonizing changes to U.S. patent law – could revolutionize the efficiency and effectiveness of U.S. patent system, if undertaken in a coordinated fashion.
While the more detailed and technical observations of AIPLA appear below, they should not obscure or dilute the essential conclusion reached after a careful study of the NAS work. The NAS Report represents a major achievement in the continuing efforts directed towards improving the operation of the U.S. patent system. The NAS Report should not only be carefully studied, but it should serve as a call to action by the Congress and other U.S.-based organizations interested in the future of the U.S. patent laws. Congress should look closely at improving the funding and financing of the U.S. Patent and Trademark Office, creating a balanced opportunity for post-grant opposition to all issued U.S. patents, barring patent infringement suits for certain research or experimental activities, eliminating subjective elements from patent litigation, and enacting a comprehensive set of “harmonizing” changes to the U.S. patent laws."
Malta, Iceland and Lithuania soon to acceed to the European Patent Convention.
The UK-PTOreports that Malta, Iceland and Lithuania have recently completed their parliamentary processes, and will soon become full members of the European Patent Organisation. These accessions mean that applicants will be able to file applications designating Iceland, Malta and Lithuania, but they will not be able to designate these countries retrospectively in earlier applications. It is anticipated that Latvia will also join the European Patent Convention later this year. The European Patent Organisation will soon comprise the following 32 member states: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.
"[...] While access to information and knowledge sharing are regarded as essential elements in fostering innovation and creativity in the information economy, adding new layers of intellectual property protection to the digital environment would obstruct the free flow of information and scuttle efforts to set up new arrangements for promoting innovation and creativity, through initiatives such as the ‘Creative Commons’. The ongoing controversy surrounding the use of technological protection measures in the digital environment is also of great concern.
The provisions of any treaties in this field must be balanced and clearly take on board the interests of consumers and the public at large. It is important to safeguard the exceptions and limitations existing in the domestic laws of Member States.
In order to tap into the development potential offered by the digital environment, it is important to bear in mind the relevance of open access models for the promotion of innovation and creativity. In this regard, WIPO should consider undertaking activities with a view to exploring the promise held by open collaborative projects to develop public goods, as exemplified by the Human Genome Project and Open Source Software. Finally, the potential development implications of several of the provisions of the proposed Treaty on the Protection of Broadcasting Organizations that the Standing Committee on Copyright and Related Rights is currently discussing should be examined taking into consideration the interests of consumers and of the public at large. [...]"
In an Appendix, some particular proposals are made, inter alia, as follows:
Adoption of a high-level declaration on intellectual property and development: The Declaration could be adopted by the General Assembly itself or by a specially convened international conference on intellectual property and development. The Declaration should address the development concerns that have been raised by WIPO Member States and the international community at large;
Amendments to the WIPO Convention: In order to ensure that development concerns are fully brought into WIPO activities, the Member States may consider the possibility of amending the Convention Establishing the World Intellectual Property Organization (1967).[...] Paragraph (i) of Article 3 of the WIPO Convention could be amended to read as follows: '(i) to promote the protection of intellectual property throughout the world through cooperation among States and, where appropriate, in collaboration with any other international organization, fully taking into account the development needs of its Member States, particularly developing countries and least-developed countries'; and
Participation of civil society: WIPO must take the appropriate measures to ensure the wide participation of civil society in WIPO’s activities, changing WIPO’s terminology with regard to NGOs.
"[...] Humanity faces a global crisis in the governance of knowledge, technology and culture. The crisis is manifest in many ways.
Without access to essential medicines, millions suffer and die;
Morally repugnant inequality of access to education, knowledge and technology undermines development and social cohesion;
Anticompetitive practices in the knowledge economy impose enormous costs on consumers and retard innovation;
Authors, artists and inventors face mounting barriers to follow-on innovation;
Concentrated ownership and control of knowledge, technology, biological resources and culture harm development, diversity and democratic institutions;
Technological measures designed to enforce intellectual property rights in digital environments threaten core exceptions in copyright laws for disabled persons, libraries, educators, authors and consumers, and undermine privacy and freedom;
Key mechanisms to compensate and support creative individuals and communities are unfair to both creative persons and consumers;
Private interests misappropriate social and public goods, and lock up the public domain.
At the same time, there are astoundingly promising innovations in information, medical and other essential technologies, as well as in social movements and business models. We are witnessing highly successful campaigns for access to drugs for AIDS, scientific journals, genomic information and other databases, and hundreds of innovative collaborative efforts to create public goods, including the Internet, the World Wide Web, Wikipedia, the Creative Commons, GNU Linux and other free and open software projects, as well as distance education tools and medical research tools. Technologies such as Google now provide tens of millions with powerful tools to find information. Alternative compensation systems have been proposed to expand access and interest in cultural works, while providing both artists and consumers with efficient and fair systems for compensation. There is renewed interest in compensatory liability rules, innovation prizes, or competitive intermediators, as models for economic incentives for science and technology that can facilitate sequential follow-on innovation and avoid monopolist abuses. In 2001, the World Trade Organization (WTO) declared that member countries should 'promote access to medicines for all.' [...]
As an intergovernmental organization, however, WIPO embraced a culture of creating and expanding monopoly privileges, often without regard to consequences. The continuous expansion of these privileges and their enforcement mechanisms has led to grave social and economic costs, and has hampered and threatened other important systems of creativity and innovation. WIPO needs to enable its members to understand the real economic and social consequences of excessive intellectual property protections, and the importance of striking a balance between the public domain and competition on the one hand, and the realm of property rights on the other. The mantras that "more is better" or "that less is never good" are disingenuous and dangerous -- and have greatly compromised the standing of WIPO, especially among experts in intellectual property policy. WIPO must change.
We do not ask that WIPO abandon efforts to promote the appropriate protection of intellectual property, or abandon all efforts to harmonize or improve these laws. But we insist that WIPO to work from the broader framework described in the 1974 agreement with the UN, and to take a more balanced and realistic view of the social benefits and costs of intellectual property rights as a tool, but not the only tool, for supporting creativity intellectual activity.
WIPO must also express a more balanced view of the relative benefits of harmonization and diversity, and seek to impose global conformity only when it truly benefits all of humanity. A "one size fits all" approach that embraces the highest levels of intellectual property protection for everyone leads to unjust and burdensome outcomes for countries that are struggling to meet the most basic needs of their citizens. [...]"
Legal Protection of Designs - Extended Impact Assessment.
The Council of the European Union has published a Commission Staff Working Document No. COM(2004)582 final "Proposal for a Directive of the European Parliament and of the Council amending Directive 98/71/EC on the legal protection of designs - Extended Impact Assessment". The extended impact assessment has been drawn up making use of the available data at the disposal of the Commission. In particular the answers to the questionnaire sent in 1999 (to vehicle manufacturers, suppliers, independent component producers, insurance companies, parts distributors, repairers and consumer organisations), the results of the impact study undertaken in 2003, the various reviews and reports concerning Intellectual Property Rights, IPR, and the data sent to the Commission by other interested parties.
FICPI Position Paper on the Patentability of Computer-Implemented Inventions.
FICPI has published a Position Paper on the European Union Parliament's Decision of 24 September 2003 on the proposed Directive on the Patentability of Computer-Implemented Inventions.
"[...] FICPI strongly opposes the amendments introduced by the Parliament which do not comply with the obligations of the TRIPS Agreement, believing them to severely weaken the competitiveness of European industry, thus widening the gap between the patent laws in Europe and those of non-European countries. This is seen as undermining the efforts of WIPO towards a world-wide harmonisation of substantive patent law, creating instead of reducing, as originally intended, legal uncertainty for European inventors, businesses and third parties in the field of computerimplemented inventions. It would therefore be preferable to abandon the directive rather than to implement the text adopted by the Parliament either with only insubstantive revisions or without any at all. [...]"
Consultation on UK Legislation relating to Community Designs.
A new Consultation Process has been launched in the UK. The purpose of this consultation is to seek views on a number of possibilities for legislation which would ensure that the Community designs system works correctly, and that the checks and balances in the system are correct. The particular issues are:
making it an offence to claim falsely in the UK that a design is protected as a Community design;
providing redress against groundless threats of infringement of a Community design in the UK;
providing that communications with a professional representative on the special list under Article 78 of the Community Design Regulation in matters regarding the protection of designs should be privileged, whether or not that representative is also a patent or trade mark agent;
extension of crown use provisions of the Registered Designs Act 1949 to cover community designs to the extent that the use is necessary for essential defence or security needs; and
designation of Community designs courts.
Responses are welcome from anyone in the UK or abroad who is interested in the operation of the intellectual property system in the UK but especially from those who have been, are, or expect to be users of the system. Deadline for comments is December 13, 2004.
I am very curious to learn whether or not the Council will formally rubber-stamp the political agreement on the Draft Directive on the patentability of computer-implemented inventions as reached on the previous session of May 18, 2004. The FFII e.V. had announced to turn the table even before the Council has formally voted by influencing politicians in certain countries like NL, PL, HU, and PT.
According to the Commission's proposal, the amendment concerns design protection of spare parts intended to restore the appearance of complex products such as motor vehicles. It aims to complete the Internal Market through the process of liberalisation begun and partially achieved in Directive 98/71/EC, so as to increase competition and offer consumers greater choice as to the source of spare parts used for repair purposes. At the same time it maintains the overall incentive for investment in design as it does not affect design protection for new parts incorporated at the manufacturing stage of a complex product. At present, the Directive does not exclude the protection of spare parts by a design right, in other words, the protection conferred on the design of the new part in the primary market can equally well apply to the spare part in the secondary market or aftermarket. The Commission argues that in spite of the fact that Member States were not able to agree on harmonisation in the aftermarket, article 14 of the Directive did stipulate that Member States shall maintain their existing laws in this regard and may change those provisions only in a way that liberalises the spare parts market (the “freeze plus” solution). What is more, Article 18 of the Directive provides for the Commission to analyse the consequences of the Directive and to come forward with any changes to the Directive to complete the market in spare parts. As the Directive did not change the status quo for existing spare parts regimes in MS, except to allow for liberalisation, an analysis of the consequences of the Directive itself at this stage would not assist in deciding what further changes are necessary. Instead, the Commission focussed its study on the specific issue of design protection in the aftermarket. Now that all Member States have transposed Directive 98/71/EC into their national legislation the situation is as follows:
Austria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Lithuania, Malta, Poland, Portugal, Slovakia, Slovenia and Sweden have still effectively design protection for spare parts.
In Belgium, Hungary, Ireland, Italy, Latvia, Luxembourg, The Netherlands, Spain and United Kingdom a repairs clause is foreseen, allowing design protection on new products but leaving the possibility for alternative parts in repair or replacement in the aftermarket.
Greece provides for a repairs clause combined with a term of protection of 5 years and a fair and reasonable remuneration. This system of remuneration has not yet been put into practice.
Article 1 of the proposal now provides that protection as a design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 12(1) of the Directive, for the purpose of the repair of that complex product so as to restore its original appearance. Member States shall ensure that consumers are duly informed about the origin of spare parts so that they can make an informed choice between competing spare parts.
Here and there press releases and other statements from individual patent professionals or of their associations and Institutes appear which might be read as if they would suggest a view according to which an "Open Source Community" is to be blamed for causing all of that current turmoil in patent politics. Disgusted by the outspoken preference of some groups within that Open Source Community for the intellectual commons, perhaps some patent professionals might covertly or openly think that the world might be a better place to live and work if Free / Open Source Software (F/OSS) does not exist. However, such conclusions would be misleading.
Independently of any pros and cons of F/OSS it surely would be wise if every serious discussion of patent policy is based on the assumption that F/OSS is here to stay. F/OSS is simply a success story, and any attempt to turn it down in order to save some particular details of the present patent system would surely be hubris. Some observers even think of F/OSS as an embodiment of a new paradigm of allocation and distribution of intellectual resources.
The stakeholders in this field of software creation and distribution are not only those secularistic redeemers like Richard Stallman from FSF and his followers from the Eurolinux Alliance fiercely fighting pro intellectual commons and against the present patent system but also more business-minded people, some of them even wearing a conventional business suit and actively utilising the patent system. IBM for example hugely profits from bringing Linux-related hardware and support services to market, at the same time being one of the most active companies with regard to patent filings. The Linux distributor SuSE AG now belongs to Novell, Inc., which had been active in patenting at least in the past. And, vice versa, there are a lot of SMEs making their profit in conjunction with closed-source software and nevertheless supporting Eurolinux Alliance in their anti-patent fight. There is simply no one-to-one mapping of closed-source software and F/OSS, on the one hand, to pro-patent and anti-patent moods, respectively, on the other hand. The reality is more complex, despite the fact that some anti-patent NGOs loudly claim to be the only and true stakeholders of the F/OSS scene.
In 1994, the European Patent Office had published the results of a representative survey concerning the acceptance of the patent system in Europe. This study clearly pointed out that SMEs significantly underused the patent system. Now, it seems as if in those days SMEs have passively ignored the patent system whereas nowadays some of them are no longer staying aside but, inflamed by Eurolinux, actively attempting to undermine the patent system.
Therefore, one of the key insights for curing the present crisis of the patent system might be that one of the more important causes thereof is a scarcity of acceptance of the present patent system by SMEs in the field of IT. This deficiency might be considered partially home grown as it looks as if in the 80es and 90es of the past century little efforts have been made by patent professionals to remove in the general public the widespread urban myth that software-related inventions cannot be patented at all in view of Article 52 EPC. Perhaps the current difficulties can be seen as something like a late nemesis in return for the lapses that occurred during those years.
"[...] Copyright is already the main IP system for non-aesthetic creations such as instruction manuals, software, architecture and, to varying degrees in different jurisdictions, functional industrial design. It is considered to be appropriate for logical creations (as opposed to 'technical inventions' in the classical patent theory). Currently many people observe 'convergence' of both, and the trend is to solve more problems at the level of logical creations. [...]"
So, the question seems to be under which circumstances it might be necessary to drop the complex and costly procedure of verbalisation of an invention for filing it with a competent Authority for registration. In fact, an important difference between the respective subject-matters of copyright law, on the one hand, and patent law, on the other hand, is of a statistical nature:
The statistical probability that any given creative text of a substantial length authored by a human being is reproduced accidentally and independently by another human being is virtually vanishing. If two texts authored by two different persons are identical or very similar then this may have two reasons:
Plagiarism, i.e. the second person has cheated and created a derivative text using knowledge of the original first text; and/or
the texts involved are determined by intrinsic structures so that they cannot be seen as creatively authored creations.
The uniqueness of the fabric of characters and words composed to form an act of literature in itself makes sure that as soon as the identity of the first author is established e.g. by a copyright note the conceptual prerequisites of copyright are fulfilled; the act is self-explanatory or self-documenting so far and, hence, no further registration procedure is necessary in order to establish copyright protection. With other words, a work or act of literature embodies its own fingerprint. And, because of the probability of any independent accidental re-creation of some piece literal work is negligible, copyright law merely provides an exclusive right to copy and to create derivative works but no exclusive right to create a certain work.
However, this scheme does not work with inventions in the sense of the patent law. If two different persons A and B are bringing an alloy to market composed of 57% of metal X and 43% of metal Y, person A being ahead in time relatively to person B, then there is no statistical hint or evidence available which might help to determine whether B has copied the alloy or has independently re-invented the same. Independent co-inventions may occur at a non-vanishing probability, and in order to award the first inventor, patent law cannot be confined to any exclusive right of copying an invention. To the contrary, it is necessary that a patent provides an exclusive right to make commercial use of a patented invention irrespective of whether it is copied or re-invented independently. The fact that in most countries the first-to-file applicant is awarded a patent but not the true first inventor is based on a procedural fiction that in most cases the applicant is in fact the true first inventor or has the right to patent the invention obtained from the true and first inventor. Any first and true inventor not hurrying to the Patent Office to apply for a patent is effectively punished for this delay because any second inventor can successfully obtain the patent. This effect is acknowledged in most countries except the U.S. in order to simplify the grant procedure.
Inventions are not self-explanatory in the same sense as copyrightable subject-matters are. A thing made of that alloy in itself does not document the invention because of nobody knows that it is just the composition of the alloy which makes that thing distinct. Inventions do not document themselves; they have to be documented by means of verbalisation.
Moreover, if A and/or B simply are in possession of the technical teaching to produce and use said particular alloy without bringing any embodyment of the invention to market or publishing a verbalisation if the invention then there is no visible indication whatsoever from which the general public could learn something relevant about the inventor of the alloy. The grant of a patent requires that the applicant is in possession of the invention. Not required is that a tangible embodiment of the invention really exists; it is enough that the inventor just knows what and how to do.
The problem is that the identification and verbalisation of an invention is complex and, hence, expensive. Moreover, specialists have come up for doing that job. And here we recognise what is the real point for Mr. Pilch favouring a "Copyright Only" doctrine:
"Features of future Integrated System of I2P: [...] low complexity, care to avoid creation of special interest groups that hijack the legislative process. [...]"
Ah, identifying and verbalising inventions for purposes of the patent law would require patent professionals like Patent Attorneys, those ugly guys who tend to "hijack the legislative process". In order to eliminate them out of the knowledge business economy, Mr. Pilch is desperately seeking an alternative concept which avoids such verbalisation.
Strange enough, as a promoter of openness in the software business in form of F/OSS, Mr. Pilch favours a culture of secrecy with regard to inventions:
"Publication of claims and disclosure at an early stage impose burdens and disrupt rather than support the natural system of innovation incentives based on fast movement, business secret, competition etc. There are at best a few exceptions where codification of claims with their inevitable corollary of early disclosure could still be justifiable in the future. These are related to special circumstances where high burdens are already imposed by facts such as governmental safety certification requirements (e.g. clinical testing) [and] expensive experimentation with forces of nature (classical domain of "technical invention")."
It is really hard to understand the logic of such proposals if there is such a thing at all.