Info Service on Health Issues (Oct14/01)
3 October 2014
Third World Network
Tackling the proliferation of patents
Published in SUNS #7887 dated 3 October 2014
Geneva, 29 Sep (IPS Columnist Service/Carlos M. Correa*) -- The steady
increase in patent applications and grants that is taking place in
developed and some developing countries (notably in China) is sometimes
hailed as evidence of the strength of global innovation and of the
role of the patent system in encouraging it.
However, such an increase does not correspond to a genuine rise in
innovation. It points instead to a major deviation of the patent system
away from its intended objective: to reward those who contribute to
technological progress by creating new and inventive products and
The increase in the number of patents reflects, to a large extent,
the low requirements of patentability applied by patent offices and
courts. Patents granted despite the absence of a genuine invention
detract knowledge from the public domain and can unduly restrain legitimate
Low standards of patentability encourage a large number of applications
that would not otherwise be made, leading to a world backlog estimated
at over 10 million unexamined patents.
This problem affects various sectors. For instance, Nokia is reported
to hold around 30,000 patents relating to mobile phones, a large part
of which are likely to be invalid, while Samsung holds more than 31,000
A study covering various fields of clean energy technologies, including
solar photovoltaic, geothermal, wind and carbon capture, found nearly
400,000 patent documents.
The proliferation of patents is particularly high and problematic
in the pharmaceutical sector, where large companies actively seek
to acquire broad portfolios of patents in order to extend patent protection
beyond the expiry of the original patents on new compounds.
These ever-greening strategies allow them to keep generic producers
out of the market and charge prices higher than those that would otherwise
exist in a competitive scenario.
For example, the basic patent for paroxetine, an antidepressant, expired
in the late 1990s, whereas ‘secondary' patents will extend up to 2018.
Ever-greening strategies by one company often force others to follow
the same pattern as a defensive approach. The proliferation of ‘secondary'
or ‘spurious' patents can impose significant costs on patients and
public health systems.
Several measures can be applied at the national level to avoid the
proliferation of patents on trivial developments in full consistency
with the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS), because they fall within the policy space that World
Trade Organisation (WTO) members have retained to design and apply
their patent laws.
The most important policy that governments may implement is the rigorous
application of the requirements of patentability, based on a thorough
examination of patent applications. The TRIPS agreement neither defines
the concept of ‘invention' nor how such requirements need to be interpreted.
Thus, national laws may differentiate inventions and discoveries,
and require that the former result from an inventive activity, thereby
excluding pre-existing subject matter that is merely found, such as
While some patent offices grant patents on the basis of legal fictions
on novelty, there is no reason to follow such practices in other jurisdictions.
An example of this practice by some patent offices is to admit what
are known as ‘selection patents', whereby one of more items that were
previously disclosed are independently claimed.
This type of patents provide an effective means of ever-greening,
because protection can be extended for the full length of a new patent,
i. e. normally twenty additional years, despite the fact that novelty
was actually lost when such items were first disclosed.
While some large patent offices, such as the US Patent and Trademark
Office, the European Patent Office and the Chinese Patent Office,
seem to apply a lax inventive step standard thereby allowing for the
granting of a large number of ‘low quality' patents, there are strong
public interest arguments to follow a different approach, particularly
in developing countries.
A strict application of the industrial applicability/usefulness requirement,
when provided for by the national law, may also contribute to prevent
the grant of unwarranted patent rights.
This is the case, in particular, for claims on new medical uses, which
are equivalent to claims over methods of treatment that have no industrial
application or technical effect. The lack of industrial applicability
may be a sufficient ground to reject such claims.
Given the policy space left by the TRIPS agreement to adopt their
own definitions of the patentability standards, and to do so consistently
with their legal systems and practices, governments can follow different
methods to ensure that patents are granted only when there are sufficient
merits under the applicable law.
Governments may introduce specific standards in the patent laws themselves.
A notable case is the Indian Patent Act, as amended in 2005, which
incorporated in section 3(d) specific standards to assess patent applications
in the field of chemicals and pharmaceuticals.
In a case brought by Novartis (a Swiss pharmaceutical company) against
the rejection of its patent application relating to a beta crystalline
form of imatinib mesylate, the Indian Supreme Court held that the
claimed invention failed in both the tests of invention and patentability.
The definition of the standards of patentability can also be made
through regulations, including patent offices' guidelines. A good
example is provided by the guidelines on the patentability of pharmaceutical
products and processes adopted by the Argentine government in 2012
to limit the ever-greening of pharmaceutical patents.
Finally, it is worth noting that in applying patentability standards,
patent offices can differentiate, in line with the TRIPS agreement,
among fields of technology in order to take into account particular
features of specific sectors and public policy objectives, for instance,
in relation to the promotion of generic drugs.
Measures to accommodate these differences constitute a necessary response
to the diversity of technologies and, consequently, a condition sine
qua non for an intrinsically balanced system of protection that remains
neutral in its effects on competition.
[* Carlos Correa is the South Centre's special adviser on trade and
intellectual property issues. This column is taken from the author's
research paper on ‘Tackling the Proliferation of Patents: How to Avoid
Undue Limitations to Competition and the Public Domain', published
by the South Centre. The paper can be found at: (http://www.southcentre.int/research-paper-52-august-2014/).]
* This article was written and distributed by IPS news agency.
It was published in SUNS #7887 dated 3 October 2014. We thank IPS
and SUNS for our re-distributing this article.