IP Politics

Mr Bruno van Pottelsberghe de la Potterie is a Senior Research Fellow at Bruegel and Professor at the Université Libre de Bruxelles (ULB), Solvay Brussels School of Economics and Management (SBS-EM), where he holds the Solvay S.A. Chair of Innovation. He joined Bruegel in December 2007. Mr Bruno van Pottelsberghe was Chief Economist at the European Patent Office from November 2005 to the end of 2007.

Mr van Pottelsberghe recently has published a first draft version of a paper titled The quality factor in patent systems. He concludes:

"This paper puts forward a new methodology that aims at comparing quality across patent systems. Quality is defined as the extent to which patent offices comply with the legal standards that rule patentability conditions (novelty, inventiveness, transparency). The methodology consists in a two-layer analytical framework composed of "legal standards" and their "operational design". Operational designs include several elements that frame the rigour and transparency of the filtering processes. The in-depth analysis of these two layers for the patent offices of the USA (USPTO), Japan (JPO) and Europe (EPO) lead to the following conclusions. The operational designs’ components are interdependent and form a coherent system. This systemic approach underlines that if legal standards are similar across countries, their operational design are heterogeneous. The empirical evidence suggests that the EPO provides higher quality services than the USPTO, the JPO being in an intermediate position. These differences call for a multi-faceted convergence of patent systems before worldwide mutual recognition and worksharing practices are to be put in place."

For sure his former colleagues at the EPO will be flattered to read this. Mr van Pottelsberghe de la Potterie explicitly has encouraged comments on his paper.

When suggesting to set up a multi-faceted convergence of patent systems before worldwide mutual recognition and worksharing practices are to be put in place there appears to be some parallelism with leaving EPO President Ms Brimelow who said some time ago that it might be all the better if substantive patent law harmonization - perhaps rendered more attractive by work-sharing arrangements which would maximize the efficiency gains that harmonization might bring - occurred after the infrastructure for dealing with another potential growth spurt had been set up, rather than before.

As recently announced in my earlier posting, the current Draft on the so-called Anti-Counterfeiting Trade Agreement (ACTA) has Officially been released. Just a few remarks:

1. Transparency and Openness

The Document is still redacted insofar as there are no longer included any indications on the negotiation positions of the various parties to the talks. Also on EU level, countries appear to be eager to hide their position from general public. For example, there is a EU Council Document 8931/10 titled 'Anti-Counterfeiting Trade Agreement (ACTA) - Special Measures Related to Technological Enforcement Means and the Internet = German position' the contents of which is not accessible.

2. The Nature of the ACTA Agreement

The title of the entire paper is misguiding. The agreement under consideration is not merely directed to Anti-Counterfeiting:

It has always been difficult for contemporaries to recognise the peculiarities of their own epoch in which they live. Later on, after decades or centuries, it is much easier to analyse and explain things ex post in countless doctoral thesis and other scholar work. Nevertheless, those who here and now get at least some vague idea of what might be a distinguishing feature vis-a-vis history will surely enjoy the benefit of a more appropriate assessment of options and actions.

For example, in the 1960s the world saw the heydays of mechanical engineering, and in particular Germany had a strong reputation for construction and manufacturing of high quality machining tools. The automotive industries were booming, and a linear extrapolation of the near time expectations of those days to longer time scales resulted in utopian dreams of universal mechanical three-dimensional mobility by flying saucers available for everyone expected to become reality soon after the year 2000.

Nothing of that has happened. Instead, other big things are going on.

As it is well known to all stakeholders involved, the patent system in Europe is highly fragmented: On the one hand, there is a system of patents granted or registered by national patent offices throughout Europe. On the other hand, in parallel there has been set up a European Patent Office (EPO) having the power to grant patents for up to 36 Contracting States forming the European Patent Organisation (EPOrg) on the basis of the European Patent Convention (EPC). Court proceedings in nullification and infringement matters concerning patents granted by national Patent Offices are governed both by substantial and procedural laws of the respective nation. However, unfortunately also European patents as granted by EPO disintegrate at the applicant's discretion expressed by a system of designations and national validation procedures into a bundle of national patents governed by national law. According to Article 64 EPC, a European patent confers in each Contracting State in respect of which it is granted the same rights as would be conferred by a national patent granted in that State, and any infringement of a European patent is dealt with by national law. Concerning the patent lifespan after the lapse of the Opposition period, Article 138 EPC states that a European patent may be revoked with effect for a Contracting State only on one or more of the grounds listed in a fixed catalogue of reasons set on EPC level, but all procedural matters are left to national law.

On February 05, 2010, the General Secretariat of the EU Council has published Document 6164/10 titled “Commission communication 'Enhancing the enforcement of intellectual property rights in the internal market' - Revised proposal for a Council Resolution” replacing its predecessor published in Document 5808/10. It has been drawn up by the EU Presidency for discussion at the meeting of the Intellectual Property Attachés on 9 February 2010. As was to be expected, the EU Council is, inter alia, about to

Mr Michael Geist reports on his Blog on the Anti-Counterfeiting Trade Agreement (ACTA) negotiations scheduled to continue in a few hours in Seoul, Korea. Despite the efforts to combat leaks, information on the Internet chapter has begun to emerge. Sources say that the draft text, modelled on the U.S.-South Korea free trade agreement, focuses on following five issues, comprising, inter alia, two items as quoted below:

[...]

2. A requirement to establish third-party liability for copyright infringement.

3. Restrictions on limitations to 3rd party liability (ie. limited safe harbour rules for ISPs). For example, in order for ISPs to qualify for a safe harbour, they would be required establish policies to deter unauthorized storage and transmission of IP infringing content. Provisions are modeled under the U.S.-Korea Free Trade Agreement, namely Article 18.10.30. They include policies to terminate subscribers in appropriate circumstances. Notice-and-takedown, which is not currently the law in Canada nor a requirement under WIPO, would also be an ACTA requirement.

[...]

As the EU is party to those talks, it might be relevant to compare such potential provision with the present state of the EU Acquis communautaire.