“One-size” patent regime does not fit all

Expressing concern over the increasing convergence towards strict patenting standards worldwide, several speakers and participants at a 25-27 March conference organized by the World Intellectual Property Organization underscored the importance of allowing countries the flexibility to determine patent rules according to their different levels of development and different interpretations of patentability.

by Martin Khor

GENEVA: Speakers at a conference on the international patent system have highlighted the problems arising from a “one-size-fits-all” intellectual property regime, especially in relation to the patenting of new technologies, and applying it to all countries without flexibility to balance public and private interests.

If flexibility is not provided and precautions not taken, the patenting regime might become one for protecting investment more than invention, and will be departing from its original aims, a leading intellectual property expert, Professor Carlos Correa of the University of Buenos Aires, warned.

The patenting system, Correa said, is now expanding to areas where there is no inventive step involved, or where patents are granted for trivial features, and overlooks areas where there is an inventive step.

The patent system needs to have a differential approach towards countries at different levels of development, he argued, cautioning that the present attempts at harmonization of patent standards could cause problems if this need for flexibility is not recognized.

Another speaker, Prof. Michel Vivant of the University of Montpellier, France, highlighted the different approaches being taken towards patentability of new technologies, such as in the case of genetic materials. He also said that the patent instrument cannot apply in the same way to countries at different stages of development.

One of the participants said it was clear that a “one-size-fits-all” patent regime applied to all countries as a result of the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is causing problems, and that the system should change to enable the needed flexibility with regard to different countries, different interpretations of patentability and different approaches to the balance between private and public interests.

The conference (25-27 March) on the international patent system was organized by the World Intellectual Property Organization and was attended by over 300 patent officials, diplomats, lawyers, academics and NGOs.

Ill-fitting

The plenary session on “One size fits all? The challenge of new technologies”, held on 27 March, was one of the best attended. Correa, who is director of the intellectual property graduate programme in the University of Buenos Aires, focussed on how new technologies have given rise to problems in the patent system.

He said there was an explosive boom in the number of patents in the United States and this was partly due to increasing flexibility there in what is considered patentable. For example, he noted, the patent system is absorbing many trivial inventions.

Another challenge is the treatment of work based on materials that exist naturally. There is a broader recognition that patenting based on isolation of natural substances is debatable. Regarding genetic sequences, NGOs have raised ethical questions on these practices, and there is tight market control of substances, raising questions on the use of patents as a research tool. For instance, with regard to malaria vaccines, there are 35 patents affecting the use of antigens that can hold up research.

Correa also gave several examples of patents granted in the US on computer software, such as that the patented invention translates between natural languages, determines boundaries of graphic regions on a computer screen, automates spelling error corrections as in some form of a spell-checker system, or compresses and manipulates images in a computer.

He said that some mature sectors had found an opportunity to have exclusive rights over business methods, which is very controversial and had given rise to tensions.

Correa also gave examples of the granting of trivial patents, such as a method for putting in golf which features the grip of the golfer’s dominant hand so that the golfer can improve control over the speed and direction of putting.

These changes have influenced the cumulative innovation system and the patent system.

Companies with technological resources can use the patent system to gain an edge and can launch an offensive. New patenting strategies have been devised, such as “fencing” (where a series of patents, ordered in some way, block certain lines of directions of R&D) and “blanketing” (where an area is turned into a minefield of patents by ‘mining’ or ‘bombing’ every step in a manufacturing process with patents).

Correa concluded that if there is a move to greater harmonization of the patent system, the system has to be adjusted so that it benefits all.

Now the system is expanding to areas where there is no inventive step or where patents are given for trivia, even as the system overlooks areas where there is an inventive step. There is a problem of the grant of low-quality patents, especially in the US.

He added that developed countries had applied different patent standards at different times in their history. Compared to this, developing countries today have taken on stricter standards.

This raises problems as obviously one size does not fit all, said Correa, who cited a World Bank study in 2001 which concluded that developed countries should recognize that developing countries need to have lower and more flexible intellectual property standards than the developed countries, that the TRIPS Agreement provides flexibility in many areas and that developing countries should be given the opportunity to operate at the lower limits if it is in their development interests.

Correa also stated that there needs to be differential treatment for different countries. According to some countries, higher intellectual property standards need to be adopted, but then these high standards may not work to the interests of all. He added that just because more patents are granted does not mean that society benefits more. There is a need to ensure the high quality of patents granted.

Correa concluded that the harmonization process should take full account of the adjustment needed, to ensure that it meets the original aim of patents.

“We need an impact assessment of these harmonization processes, to look at the legal dimension and the social and economic implications on developing countries.”

Rethinking the conventional patent model

Prof. Michel Vivant said that patenting applied to the new technologies (biotechnology and information technology) is a highly controversial area. For example, geneticists are not in agreement whether the gene sequences represented by a series of letters are an image or whether there is really information contained in them.

Vivant also raised the question of whether there is a need to rethink the conventional patent system, and how the issue of revising the conventional model of patents could be approached.

A key issue is: what is considered an “invention”? What are considered inventions in some countries are said in other countries to be discoveries instead and not patentable. There is no formal line between discovery and invention in the US and in European countries. Noting there are no specific criteria for “invention”, Vivant asked whether there should be a rethink of what an invention is.

Asking whether the conventional patent model is still viable, Vivant said there is a broadening of what is considered patentable. Can patents be extended to such a broad area, in the present context?

Vivant noted that some people say not; others, notably in the TRIPS Agreement, argue  that  a  patent  can  be granted in all fields of technology. This phrase in  TRIPS  shows  that  there  are  no  technological  limits. Thus  there needs to be patents in all technological areas, but the broadening of the patent regime leaves us with a situation where the conventional model is not viable, he said.

Citing the debate on what constitutes an inventive step in the cases of medicines and information technology, Vivant said that it would be bad if traditional rules are done away with. “If new inventions are to be patentable, they must meet the normal criteria.”

Citing the case of what an invention is in the area of biotechnology, Vivant said it was an interesting question whether there can be a single model or not, and that the question of the conventional model should be revisited.

In relation to North-South relations, Vivant said the patent instrument cannot apply in the same way to countries at all stages of development, hence the question again of whether there should be a single model. He concluded that patents can survive the 21^st century but asked whether we can adapt the model rather than just tinkering with it with regard to biotechnology and information technology. The patent system should respect the balance of interests in place in society and also the factors involved in North-South relations.

A participant commented that from listening to the speakers it was clear that one size does not fit all, and that there is a need for the patent system to have flexibility to take into account three factors: the different capacities of countries, the different interpretations of what is an invention and what is a discovery, and different approaches to what is an appropriate balance between the private interest of the patent holders and the public interests of consumers, small firms and developing countries.

The move towards harmonization, the participant said, could cause problems since there is no agreement at the moment, for example, on why microorganisms and microbiological processes have to be patentable under TRIPS, and there are also conflicts between the approaches taken by TRIPS and the Biodiversity Convention. If carried out inappropriately, harmonization could lead to a narrowing of flexibilities.

Another participant commented she detected from the speeches that there are difficulties arising from using the patent system for new technologies, and it is hard to apply the same criteria to all countries, given the development gap. There should thus be parallel paths, including setting up sui generis systems for new technologies or traditional knowledge.

In response, Correa said that in respect of Article 27.3(b) of TRIPS (which allows the patenting of life forms and natural processes), it was important to realize that although there is a requirement for justifying something as an invention in order for it to be patentable, there is no definition of what an invention is, so there is flexibility to define it, and this flexibility should be maintained.

He said there is a risk that the patent system can turn into one which protects investments more than inventions. “If we go down this road, we will move away from the original aim of providing incentives to the inventor.” (SUNS)

From TWE No 277 (16-31 March 2002)