Prior-art related issues: definition Prior-art related issues: definition of prior art, novelty and inventive of prior art, novelty and inventive stepstep

OPEN FORUM ON THE DRAFT OPEN FORUM ON THE DRAFT SUBSTANTIVE PATENT LAW SUBSTANTIVE PATENT LAW

TREATY (SPLT)TREATY (SPLT)

Geneva, March 1 to 3, 2006Geneva, March 1 to 3, 2006

Carlos M. CorreaCarlos M. Correa

Prior art in the draft SPLTPrior art in the draft SPLT

The prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form[, as prescribed in the Regulations,] before the priority date of the claimed invention (article 8(1).

Relative or absolute Relative or absolute novelty?novelty? Foreign non-written disclosures Foreign non-written disclosures

(e.g. (e.g. 35 U.S.C section 102 (a)35 U.S.C section 102 (a)) ) IIn the TRIPS Agreement there is n the TRIPS Agreement there is

‘no prescription as to how WTO ‘no prescription as to how WTO Members define what inventions Members define what inventions are to be considered “new” within are to be considered “new” within their domestic systems’their domestic systems’ [[IP/Q3/USA/1, May 1, 1998]IP/Q3/USA/1, May 1, 1998]

Novelty: other Novelty: other problematic issuesproblematic issues Secret prior commercial use

Expressis verbis v. implicit teaching

Selection patents

Inventive step in the Inventive step in the draft SPLTdraft SPLT A person skilled in the art means

a hypothetical person with general knowledge and ordinary skill in the relevant field of the art at the relevant date (Rule 2).

Defining a person having Defining a person having ordinary skill in the art ordinary skill in the art (PHOSITA)(PHOSITA)

Ordinary knowledge or expert Ordinary knowledge or expert knowledge?knowledge?

How much skilled How much skilled PHOSITA is? US PHOSITA is? US practicepractice The courts have endowed the The courts have endowed the

PHOSITA with mediocre personality PHOSITA with mediocre personality traits; she is conceived of as an traits; she is conceived of as an entity that adopts conventional entity that adopts conventional approaches to problem solving, and approaches to problem solving, and is not inclined to innovate, either is not inclined to innovate, either via exceptional insight or via exceptional insight or painstaking labor (Burk and Lemley, painstaking labor (Burk and Lemley, 2002)2002)

Is PHOSITA the same for Is PHOSITA the same for all inventions? US all inventions? US practicepractice

Courts treat differently non-obviousness in biotechnological (low standard) and software (high standard) inventions

(Burk and Lemley, 2002)(Burk and Lemley, 2002)

Differences Differences withinwithin national national systems: US examplesystems: US example

Less than 30% of patents were found valid by courts before CAFC (Jaffe and Lerner, 2004, 105)

CAFC reversed 10% of cases that initially found the patent to be valid and 51% of cases where the patent was initially found to be invalid (1982-1989)(Cooley, 1989)

Is PHOSITA in risk of Is PHOSITA in risk of extinction?extinction?

Growing role of secondary factors Growing role of secondary factors (c(commercial success, failure of others, long felt need)

Non-obvious as equivalent to Non-obvious as equivalent to novelnovel

In the opinion of the US In the opinion of the US Federal Trade Commission Federal Trade Commission ……

““It does not seem sensible to It does not seem sensible to treat an issued patent as though treat an issued patent as though it had met some higher standard it had met some higher standard of patentability” of patentability” (FTC, 2003, 10)(FTC, 2003, 10)

Harmonize, on the basis of Harmonize, on the basis of which standard?which standard?

A new device, to be patentable, “must A new device, to be patentable, “must reveal the flash of creative genius”reveal the flash of creative genius”

(Justice Douglas in (Justice Douglas in Cuno Engineering Corp., 314 U.S. 84, 51 U.S.P.Q. 1, Cuno Engineering Corp., 314 U.S. 84, 51 U.S.P.Q. 1, 19411941))

The only valid patents are those the The only valid patents are those the Court has not been able to get its hands Court has not been able to get its hands on on

(Justice Jackson (Justice Jackson Junguersen v. Ostby & Barton Co., 335 U.S. 560, 80 Junguersen v. Ostby & Barton Co., 335 U.S. 560, 80 U.S.P.Q. 32 (1949)dissenting opinionU.S.P.Q. 32 (1949)dissenting opinion))

OROR

Method of putting golfer’s Method of putting golfer’s handhand

US Patent 5,616,989US Patent 5,616,989

A method of putting features the golfer’s dominant hand A method of putting features the golfer’s dominant hand so that the golfer can improve control over putting speed so that the golfer can improve control over putting speed and direction. The golfer’s non-dominant hand stabilizes and direction. The golfer’s non-dominant hand stabilizes the dominant hand and the orientation of the putter the dominant hand and the orientation of the putter blade, but does not otherwise substantially interfere with blade, but does not otherwise substantially interfere with the putting stroke. In particular, a right-handed golfer the putting stroke. In particular, a right-handed golfer grips the putter grip with their right handing a grips the putter grip with their right handing a conventional manner so that the thumb on the right hand conventional manner so that the thumb on the right hand is placed straight down the top surface of the putter grip. is placed straight down the top surface of the putter grip. The golfer addresses the ball as if to stroke the putter The golfer addresses the ball as if to stroke the putter using only the right hand…using only the right hand…

On-line price comparison of On-line price comparison of competitor’s goods and/or competitor’s goods and/or services over a computer services over a computer networknetwork US Patent 6,076,070US Patent 6,076,070 A method for a computer-implemented on-line A method for a computer-implemented on-line

comparison over a computer network of goods and/or comparison over a computer network of goods and/or services sold by a vendor comprising the steps of:services sold by a vendor comprising the steps of:

Requesting through said computer network from a Requesting through said computer network from a competitor’s database a price for an item;competitor’s database a price for an item;

Displaying said competitor’s price on a displayDisplaying said competitor’s price on a display Decreasing the price of said item sold by the vendor by a Decreasing the price of said item sold by the vendor by a

predetermined amount to create a new price if said predetermined amount to create a new price if said competitor’s price is less than said item price; andcompetitor’s price is less than said item price; and

Displaying said new price on said display….Displaying said new price on said display….

Mouth Appliance for Assisting in Weight Control Patent Number: 4,883,072

Date of Patent. Nov. 28, 1989

Inventor: Edward W. Bessler, Fort Mitchell, KY

Animal Hat Apparatus and Metbod

Patent Number: 4,969,317 Date of Patent: Nov. 13, 1990Inventor: April Ode, Lake Havasu City, AZ

Increase in patenting Increase in patenting

If this increase in patenting If this increase in patenting reflected an explosion of US reflected an explosion of US inventiveness, it would be cause for inventiveness, it would be cause for celebration. But unfortunately it is celebration. But unfortunately it is clear that the rapid increase in the clear that the rapid increase in the rate of patenting has been rate of patenting has been accompanied by a proliferation of of accompanied by a proliferation of of patent awards of dubious merit…patent awards of dubious merit…(Jaffe and Lerner, 2004,6)(Jaffe and Lerner, 2004,6)

Low standards of patentability Low standards of patentability ……

create an overload in patent officescreate an overload in patent offices promote evergreeningpromote evergreening increases litigationincreases litigation permit agressive use (abuse) of permit agressive use (abuse) of

dubiuos patents against weaker dubiuos patents against weaker competitorscompetitors

negatively affect social policies negatively affect social policies (e.g. access to medicines)(e.g. access to medicines)

The inventive step should The inventive step should be applied in a manner be applied in a manner that…that… raises R&D in industries that raises R&D in industries that

innovate rapidly and in risky innovate rapidly and in risky projects projects (Hunt, 38; (Hunt, 38; Merges (88, 92)))

reduces offices’ work overload, reduces offices’ work overload, improves patent qualityimproves patent quality

rewards genuine contributions rewards genuine contributions (utility models for minor (utility models for minor innovations)innovations)

The role of patent The role of patent officesoffices

Patent offices have become Patent offices have become extremely pro-patent since the early extremely pro-patent since the early 1980s…the applicant, formerly 1980s…the applicant, formerly considered with suspicion, has considered with suspicion, has become a ‘client’, whose needs must become a ‘client’, whose needs must be satisfied by quick, cheap be satisfied by quick, cheap procedures. The result is a total procedures. The result is a total deterioration of examination deterioration of examination procedures…(Foray, 2004,450)procedures…(Foray, 2004,450)

Objectives of WIPO’s Objectives of WIPO’s patent agendapatent agenda

Facilitate international patentingFacilitate international patenting Reduce overload of patent officesReduce overload of patent offices Reduce costs for applicants and Reduce costs for applicants and

time of procedurestime of procedures

If frivolous applications were If frivolous applications were normally denied…normally denied…

The number of applications will be The number of applications will be dramatically reduceddramatically reduced

The time allocated by examiners The time allocated by examiners would increasewould increase

Litigation costs and patent abuses Litigation costs and patent abuses will diminishwill diminish

Is substantive harmonization the Is substantive harmonization the best way to achieve the Agenda’s best way to achieve the Agenda’s

objectives?objectives? Differences within and between Differences within and between

countries will remaincountries will remain

WIPO’s Agenda does not address WIPO’s Agenda does not address the crucial problemsthe crucial problems

Is substantive Is substantive harmonization harmonization desirable?desirable? Smaller room for the design of Smaller room for the design of

innovation policy and adaptation innovation policy and adaptation to levels of developmentto levels of development

Risk of universalization of Risk of universalization of mediocre PHOSITA and patent mediocre PHOSITA and patent proliferationproliferation

Less global competition and Less global competition and innovationinnovation

An alternative patent An alternative patent agenda should…agenda should…

– Discourage patent proliferationDiscourage patent proliferation– Improve patent quality and protect Improve patent quality and protect

the public domainthe public domain– Encourage States to differentiate Encourage States to differentiate

according to their innovation according to their innovation systemssystems

– Ensure the patent system serves the Ensure the patent system serves the public interest and promotes public interest and promotes developmentdevelopment

REFERENCESREFERENCES

Coolley, Ronald B. 1989. "What the Federal Circuit Has Done and How Often: Statistical Study of the CAFC Patent Decisions - 1982 to 1988." Journal of the Patent and Trademarks Office Society. Vol. 71: 385-98.

Federal Trade Commission (FTC) (2003), To promote innovation: the proper balance of competition and patent law policy, htpp://www.ftc.gov

Foray, Dominique. 2004. « The patent system and the dynamics of innovation in Europe », Science and Public Policy. Vol. 3, No. 6: 449-456.

Robert M. Hunt. 1999. NONOBVIOUSNESS AND THE INCENTIVE TO INNOVATE: AN ECONOMIC ANALYSIS OF INTELLECTUAL PROPERTY REFORM. Federal Reserve Bank of Philadelphia

Jaffe, Adam B. and Lerner, Josh (2004), Innovation and Its Discontents : How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It, Princeton University Press.

Merges, Robert P. 1992. "Uncertainty and the Standard of Patentability." High Technology Law Journal. Vol. 7: 1-70._____. 1988. "Commercial Success and Patent Standards: Economic Perspectives on Innovation."California Law Review. Vol. 76: 805-76.