WIPO Panel Features Views On Patent System Flexibilities

By William New
A well-balanced colloquium at the World Intellectual Property Organization allowed views from two sides to be heard on the subject of flexibilities in the patent system.

The presenters at the 16 February event appeared to split along lines of a developing country view and a view from developed countries, the primary patent holders. Both demonstrated a high degree of knowledge in the field.

The speakers were N.S. Gopalakrishnan, an intellectual property rights law professor at the Cochin University of Science and Technology in Kerala, India, and Joseph Strauss, director of the Max Planck Institute for Intellectual Property, Competition and Tax Law in Munich, Germany. The event was one in a series of patent colloquia at WIPO this year.

Gopalakrishnan described the historical emergence of flexibilities in the patent system up to the 1994 World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which took effect on 1 January, 2005.

He questioned whether a strong patent system can result in “equal distribution of benefits to globalisation to unequal economies,” and explained the need for flexibilities. From the 1624 Statute of Monopolies to the 1883 Paris Convention for the Protection of Industrial Property, there was “total flexibility,” he said, and a patent was a privilege. From there, the patent system moved from national standards to minimum international standards, he said.

Under TRIPS, binding obligations with limited flexibilities were introduced, Gopalakrishnan said. With bilateral and regional free trade agreements, he said, provisions on patents are going beyond TRIPS, expanding the rights of owners and reducing the scope of limitations and exceptions. In addition, efforts to create new treaties, such as the Substantive Patent Law Treaty at WIPO, attempt to go beyond TRIPS as well. New initiatives also seek to strengthen enforcement provisions, he said.

Pressures are rising on the patent system as developing countries increasingly adopt standards created in developed countries, patent filing increases, infringement litigation grows, monopoly abuse rises outside of the patent country of origin, future innovation is crimped, and difficulties arise in implementing public policy on health and food security, Gopalakrishnan said. Economic rights are taking precedent over public policy concerns such as in the area of access to patented health products, he argued, and it is the government’s role to ensure policy issues get addressed.

There is a need to find a balance by identifying the required flexibilities, he said. Areas to look at include standards of patentability, scope of inventive step or non-obviousness, scope of interpretation of patent claims, and exceptions and limitations such as research and fair use of patents.

Other challenges include finding ways to promote investment and meet public needs, including preventing the creation of import monopolies, preventing patent thickets, developing new liberal norms on compulsory licensing, and the use of principles of exhaustion, Gopalakrishnan said.

He also called for revisiting the TRIPS-based patent system from the perspective of the proposed Developmental Agenda before WIPO.

Strauss: IP Good for Growth

Strauss showed statistics making a case for the positive impact on developing and newly industrialised countries after TRIPS. He also highlighted the rapid growth of patent filings by residents in developing countries, and of US patents granted to developing countries. He further showed the rise in investment in research and development in China.

Strauss described the flexibilities, or “weaknesses,” as he called them, in patent systems before TRIPS. There were numerous exclusions from patentability among members, particularly pharmaceuticals and animal and plant varieties.

He also fingered what he sees as an inconsistency for countries that accepted the TRIPS agreement and conditions in bilateral trade deals then turn around and argue at WIPO against patent harmonisation. He cautioned that under the most-favoured-nation clause, the countries have to apply the standards of their trade deals to all other nations.

Strauss also touted the importance of protection of patents, which he said provides an incentive for invention. On compulsory licenses, which allow use of a patented idea without permission of the patent holder, he said their overuse might “kill the area.”

A WTO official said the availability of compulsory licenses is a “powerful negotiating tool.”

Both speakers said discussions on competition law changes related to intellectual property to the national and regional levels. A debate on this is taking place within the negotiations over a WIPO Development Agenda, ongoing this week.

William New may be reached at wnew@ip-watch.ch.