OECD Gets Input For Possible Roadmap On Patent Exemptions

MADRID – The plan of the Organisation for Economic Co-operation and Development (OECD) to develop a roadmap on patents and research got substantial input at a conference here as the viewpoints of people favouring patents in research as well as those opposing it generated a lively debate.

The focus of the conference was “research exemptions,” said to make it legal to carry out further research on patented work under certain circumstances. This is legal in Europe but not in the United States, sources said. Switzerland plans to introduce it into its law next year.

Nobuo Tanaka, director of science, technology and industry at the OECD, told Intellectual Property Watch that the OECD is working on a report on research exemptions that would be finished this year. The 30-nation group, whose members hold the majority of the world’s intellectual property, is now listening to the experience of the member states and asking them what they would want from the OECD in this area. Possibilities include: guidelines on patent exemptions, a binding agreement, economic studies, proposal for harmonisation or to leave the situation as is.

Tanaka emphasised that the OECD’s focus is always economic analysis and impact and it would be up to the member countries to implement possible recommendations.

Experts on panels gave the OECD mixed signals in terms of what member countries want it to do, but there was a general agreement that no binding agreement would be feasible or favourable. Instead, there was support for open discussions such as this conference, possible guidelines or empirical studies from countries with or without research exemptions.

The discussion at the 18-19 May conference was largely divided along lines of industry versus academic research, and European versus US conditions. On 19 May, the dominant subject was alternative methods to patents.

Speakers signalled that the patent system may be ripe for improvements or an increase in awareness about its functioning. “The patent system is in danger,” said Alain Gallochat of the French Ministry of Research.

Rebecca Eisenberg, a University of Michigan (US) law professor, said that patents are a problem in academic research. She said that there is “widespread misuse” of patents among academics and that lawsuits against universities are almost unheard of. But there is a reason to worry, Eisenberg said, as these patents “could be enforced, and that matters.”

She also said that disputes are becoming more common and predicted greater activity among companies that are not part of the biomedical research and development community and among patent speculators.

Eisenberg emphasised that the obstacles for academic researchers are not the patents but the “restriction to something that is costly to duplicate without a license.” She referred to empirical data presented on the first day of the conference showing that zero percent of scientists had terminated a project because of other patents in the field, but that there are problems with access to tangible materials such as genetically modified mice (IPW, Access to Knowledge, 18 May 2006).

She said that there is an increase in “demand letters” from patent holders to universities, demanding them to “pay up” or enter licensing agreements. A patent system with “reasonable boundaries” would be better than “non-enforcement against widespread infringements,” she said.

One participant said that companies probably go through the cost and pain of filing patents to use them against their competitors as they are not going after the universities. But this may be changing in the United States with companies increasingly suing universities, another participant said, adding that this is an “uncomfortable situation.” A representative from a biotechnology company said that the US research tool industry is worth $17 billion, so “there is money in research and development,” which could potentially lead to more lawsuits.

Eisenberg kicked off the international debate on research exemptions when she wrote a paper in 1989, sources said. European Patent Office (EPO) President-Elect Alison Brimelow, who chaired one of the sessions, summarised Eisenberg’s presentation like this: “Not too many people are killed jaywalking, but is it the optimal way to cross the road?”

Open Access Issues Cited as Possible Solution

Jerry Rosenthal, CEO of the Open Invention Network, said his company mixes the old patent model with open access. The company acquires patent portfolios on behalf of open access projects such as Linux which can be used if somebody charges Linux for patent infringement, he said.

The Open Invention Network is looking for companies to donate or sell their patents to them. Rosenthal faced a number of questions from the audience on the size of the portfolio, who could participate, budget, and antitrust issues.

Brian Fitzgerald of Queensland University of Technology talked about the open-source copyright initiative Creative Commons as well as the Science Commons model. He said that allowing access to knowledge could provide more innovation. Science Commons is not about open access for all but particular licenses allowing access, creating “more effective, fluid knowledge communities,” Fitzgerald said.

John Raubitschek of the Office of the Chief Counsel for Technology at the US Department of Commerce said about the commons approach that, “Maybe it is taking the pressure off the patent system?”

Sean O’Connor of the US Center for Advanced Study and Research on Intellectual Property said “the US disfavours compulsory licenses” and that research exemption there is limited to government use. Gallochat said that compulsory licenses should be part of the OECD debate on research exemptions, adding that France now allows this for medical devices and not only medicines in public health situations.

Raubitschek said that the US should not have statutory research exemptions but rather it is “better to have clear patents,” adding that “it depends” solutions are only good for the lawyers. Elisabeth Thouret-Lemaitre of Sanofi-Aventis agreed, saying that the industry wants “strong, valid patents.” She favours the EU system in this respect over the US system.

One participant said the OECD should inform researchers about what they are allowed to do, as there is a good deal of information on the US system but not on the European one which allows exemptions, concluding that the EPO may need to improve awareness.