Improving Patent Information Quality: Development and the Disclosure Requirements

The Journal of World Intellectual Property (2012) Vol. 15, no. 3, pp. 199–220

doi: 10.1111/j.1747-1796.2012.00438.x

Improving Patent Information Quality: Developmentand the Disclosure Requirements

Nefissa ChakrounUniversity of London

The paper is based on the premise that disclosure of patent information is essential for development. Thus, thequestion posed is related to the extent to which substantive disclosure rules can secure the release of qualitypatent information that can be easily retrieved and utilized for development. To this end, the paper has made theargument that clear and complete disclosure might not be necessarily adequate to secure disclosure of qualitypatent information so that access and exploitation of this technical knowledge is less than optimal in developingcountries. Apart from that, the research has suggested that improving patent information quality in itself mightnot be sufficient enough to secure access to this technical knowledge. Because availability of information does notalways mean that it is accessible, the paper has analysed impediments to the accessibility of patent informationshowing that in practical terms, accessibility to technical knowledge might be quite poor.

Keywords patent information; disclosure requirements; technology transfer; development

Playing a fundamental role in the checks and balance mechanism of the patent system, disclosedpatent information is considered critical for the advancement of science and technology (Fromer,2009; Matthews, 2010). Describing its features, the latter has been conceived as a “public good”available for everybody use (WIPO, SCP 13/5, 2009). Based on this affirmation, the paper is anappraisal of the development function of patent information essentially from a developing countryperspective.

Trying to quantify the amount of patent information that is available to the public, it appearsthat the total number of patent documents is estimated at 65 million worldwide.1 Of these documents,the total number of patents in force reached 6.7 million in 2008.2 By elimination, this amount ofpatent information represents technologies sealed by the exclusive right.3 Unless royalties are paid totheir owners, the exploitation of these technologies is subject to the patent holder’s authorization inall territories where a patent has been issued and maintained in force. Despite this assertion, patentsin force represent only 10.3% of the total documents available worldwide. In other words, 58 millionpatent documents fulfil the World Intellectual Property Organization’s (WIPO) definition of “publicgood”.

However, in practice, precisely the reverse happens. Modern, large-scale patenting creates com-plex rules, that leads to vagueness and ambiguity. Often engineers have doubts about the scope ofthe information they have found, as patents do not come with settled boundaries (Drahos, 2007).This poses the problem whether requirements governing the disclosure of patent information areadequate enough to secure the release of quality patent information? It also raises another concernrelated to the rules governing the various means through which disclosure of this information tothird parties is performed. It is not enough to commit the patentee to high disclosure standards if thepatent office is not committed to similar standards when publishing this information to the public forinspection.

Furthermore, the assertion that huge amounts of patent information are available in the publicdomain, needs to be interpreted with caution as a variety of digitized patent records consist of

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basic information only. Additionally, less than half may have a searchable abstract. A recent surveycarried out by the International Bureau of WIPO shows that almost 30% of responding patent officesindicated that their patent collections are available in paper format only.4 This might give rise toseveral problems.

First, availability of patent information does not necessarily mean that it is accessible especiallyby developing countries. In this respect, among 184 Member States of WIPO, patent information isavailable in electronic format for around 80 patent offices only. More crucially, much of this data issimple bibliographic data records often without title or an abstract for search and retrieval purposes.Full text of patent documents as well as detailed status information, including the legal status of thepatent is available for a minority of patent offices only (WIPO, SCP 13/5, 2009).

Second, because developing countries might not have full access to the legal status of thepatent, this poses the problem of the utilization of the patent as there is a lack of informationabout rights of exploitation that are available under the relevant domestic laws.5 Based on theabove, this paper argues that clear and complete disclosure might not be necessarily adequate tosecure disclosure of quality patent information that is easily retrieved and exploited by developingcountries.

In the exposition of this argument, the paper proceeds by first offering a definitions sectionaimed at clarifying the significance of some technical terms relevant to the research. Second, itoffers a critical examination of the law regulating the disclosure of patent information. In thisrespect, the paper makes several proposals concerning the various ways in which quality patentinformation can be improved including the adoption of quality standards for patent applications.Third, while demonstrating how the patent system allows access to patent information, the paper willtry to investigate barriers impeding retrieval and utilization of patent information for development.Conversely, in view of the current assistance provided by WIPO Development Agenda, the researchwill discuss the extent to which these programmes are enhancing the developing countries capacityto access and utilize patent information for development.

Definition and Clarifications

To start with, patent information refers to technical information contained in patent documents.6

Information encompassed in these documents exceeds the mere technical information claimingprotection for a particular invention to include chronological, geographical and related technicalreference information (Buchanan, 2008; Smith, 1986). Thus, patent information is understood tocomprise the descriptive content of the published application and granted patents as well as thebibliographic data, priority, filing date, inventor, applicant and classification in published patentdocuments.

It also refers to legal status data relating to patent applications and published patents, in addi-tion to information on the patentee and licences. Added information can also be obtained throughstatistical analysis of the data on patenting strategies, ownerships structures and development trendsfrom which conclusions can be drawn in relation to the economic significance of patent applicationsand patents (Edfjall, 2008). A review of the literature reveals that when referring to patent informa-tion, commentators might also use the term “technical information” or “technological knowledge”(Devlin, 2010; Olin, 2005; WIPO, GRTKF/IC/6/INF/4, 2004). In the same context, it might alsobe relevant to define what is meant by “patent application” as it is the legal instrument through whichthe patentee discloses the technical knowledge.

To this end, the definition will differentiate between the content and the form of the applica-tion. As far as the content is concerned, it is worth mentioning that national and regional patent

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Improving Patent Information Quality for Development Nefissa Chakroun

applications have rather uniform contents. These contents are comparable to the content of an ap-plication that is made under the International Patent Cooperation Treaty (PCT) (WIPO, SCP/13/5,2009). With regards to the form of the application, the Patent Law Treaty (PLT) provides for an arrayof requirements that are in compliance with the PCT.7 Commonly, patent laws provide that patentapplication contains a request,8 a description,9 one or more claims,10 one or more drawings11 and anabstract.12 Based on the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement,some national patent laws may require the applicant to submit search and examination reports issuedby other offices related to the invention.13

It is also of paramount importance to draw attention to some particular rules related to thedisclosure of origin particularly when the invention involves the use of biological materials or tra-ditional knowledge. The patentee is required to include in his application information related to thesource or the geographical origin of such knowledge or material that have been used in the making ofthe invention.14 Moreover, in some cases, the law requires the applicant to provide evidence of priorconsent from the authorities in addition to an agreement establishing an equitable benefit sharingunder the relevant national regime.15 In other cases, some patent offices might require the disclosureof a listing related to sequences that have used such as nucleotide and/or amino acid sequences. Thesubmitted listing facilitates the substantive examination. This listing is widely standardized and isgenerally submitted in electronic format.16 Further, the research will analyse additional documentsthat are particularly related to the disclosure of the prior art.17

In relation with patent information, it is also crucial to distinguish between “patent quality” and“patent information quality”. Patent quality is measured by how well the patent fulfils the statutoryrequirements related to the patentable subject matter (Graf, 2007). In the same context, other scholarshave outlined that patent quality determines the capacity of a granted patent to meet the statutorystandards of patentability. Thus, a low patent quality is one granted for an invention which is notnew, not obvious and with an ambiguous specification (Wagner, 2009). This concept can also belooked at from other perspectives. Hence, for good patent quality, the specifications should be clearlydefined as well as the claims that should likely to be upheld in subsequent legal proceedings (Hall andHarhoff, 2004). From an economic angle, patent quality is one that allows the commercialization ofa valuable invention (Graf, 2007).

In short, while patent quality usually refers to rigorous standards applicable when examining thepatent application, quality patent information is meant to refer to consistent and accurate data storedin a way that it would be easily retrievable (Scott, 2010). Thus, by drafting a clear and precise patentstatement, applicants are expected to ensure the pre-requisite for what will be considered a qualitypiece of patent information (Mino, 2006). Quality patent information depends heavily on the qualityof the supplied original text; in other words, it depends on the quality of the disclosed informationcontained in the incoming patent applications. Further analysis will endeavour to establish therelationship between these two concepts and how can they interact.

Lastly what differentiates this paper from others is that it does not aim to measure the scientific,technological and innovative activities through the disclosure of technical knowledge (Bhattacharya,2004; Griliches, 1990; Pavitt, 1985). Similarly, it will not analyse the trend of patent system producingthe highest quantity of patent information. This paper stops at suggesting how low-quality patentinformation might undermine access to this technological knowledge that may hinder development.These suggestions are predominantly related to the current rules concerning the disclosure, publica-tion and accessibility of patent information. It also seeks to suggest recommendations on how qualitypatent information can be enhanced so that it might be better utilized for the transfer of technologyto the developing world (WIPO, SCP/12/3, 2009; WIPO, SCP/14/4, 2010).

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Understanding the Disclosure Requirements

This section offers an examination of the substantive legal rules governing the disclosure of patentinformation to which the patentee is committed when submitting his patent application. It is a criticalanalysis aiming at investigating the extent to which these requirements are adequate enough to securethe disclosure of patent information that can be easily retrieved and exploited. While identifying someof the limits of the current rules, it will endeavour to suggest some improvements to the disclosurerequirement; primarily, by putting emphasis on the significance of the patent application.

Clear and Complete Disclosure-–Does It Allow Disclosure of Quality Patent Information?The concept of disclosure has been subject to several debates ranging from those claiming that theinventor should be allowed natural rights on his invention, to those articulating the idea that thepatent system is based on a “social contract” by which society persuades the inventor to publicize hiswork for use by others, in exchange for the exclusive right (Drahos, 1996, 2010; Lock, 1689; Merges,2011). This thinking has been illustrated by the US Supreme Court which held that—“The legislaturedid not intend to grant an exclusive right to anyone to monopolise that which was already common.There would be no quid pro quo–no price for the exclusive right or monopoly conferred upon theinventor for fourteen years”.18 More recently, the bargain approach underpinning the disclosureconcept has been increasingly criticized on the basis that “intellectual”, “property” and “rights” arean inappropriate metaphor (Amani, 2007; Ghosh, 2004). Overall, it has been established that despitethe fact that Intellectual Property Rights (IPRs) are rights-based theoretical discourse, there are goodreasons for considering that they are neither intellectual nor property, and most essentially, that theyare not rights (Amani, 2007; Wilson, 2009).

Beyond these theoretical considerations, the obligation to provide full disclosure of the patentedinvention entered the common law in 1778 (Dutton, 1984; Macleod, 1988). Internationally, it is theTRIPS Agreement that made it mandatory for Members to set up provisions aiming to compel patentapplicants to disclose their invention. This is to be in a manner sufficiently clear and complete, andcould be carried out by a person skilled in the art. The applicant might also be required to indicatethe best mode for carrying out his invention.19 This requirement has been reaffirmed and emphasizedat a regional level within the European Patent Convention (EPC) framework.20 Nationally, thedisclosure requirement is implemented in the same terms as TRIPS and the EPC. The UK PatentAct established that the specification of an application shall disclose the invention in a manner thatis clear and complete enough for the invention to be performed by a person that is skilled in theart.21 Respectively, the Intellectual Property French Code has used the same wording.22 However,the US Patent Act differs slightly, but holds more emphasis. It sets out that the patent applicationshall enclose a clear, concise and exact written description of the invention, the manner and processof making and using it, so that any person skilled in the art could carry it out.23

Still, the question that arises at this stage is how have these requirements been applied by severaljurisdictions? As far as the UK courts are concerned, the jurisprudence made a clear distinctionbetween disclosure of the invention and its ability to perform.24 Hence, specifying one essential stepor condition in making the invention is not sufficient if other requirements are not disclosed.25 Moreimportantly a full disclosure of the specification must occur before the publication of the application,that is, it has to be accomplished at the date of filing.26 In a similar vein, the Boards of Appeal ofthe European Patent Office (EPO) have established that patent specifications have to be assessed onthe basis of the application as a whole27 and not only on the basis of the claims.28 More recently, thesame Boards of Appeal considered that the disclosure of one method of using an invention is onlysufficient if it allows the invention to be used in the whole range claimed, rather than in only some ofthe methods claimed.29

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As far as the claims are concerned, the board held that patent protection under EPC is designedto protect results disclosed, obtained through successful research, as a reward for making concrete,technical results available to the public. Therefore, the protection cannot be extended for the purposeof reserving an unexplored field of research for a particular applicant.30 Referring to the requirementof sufficiency of disclosure in the biotechnology field, the board outlined a set of conditions thathave to be fulfilled by the patentee. First, the patent specification should provide at least one wayof putting the invention into practice. Second, patent specification should enable the skilled personto carry out the disclosed invention over the whole scope of the claim.31 However, the board heldthat the required extent of disclosure is assessed on a case-by-case basis, regarding the essence of theinvention.32

As far as the clarity of the claims is concerned, the board found that the use of vague termsleads to lack of clarity, making the interpretation of the claim ambiguous.33 The board set out thatlack of clarity results in the claim being subject to objection under EPC rules.34 Typically, the boardheld that claims must be clear when being read by a person with normal skills, but not includingany knowledge derived from the description of the patent application.35 Despite efforts made bydifferent jurisdictions to ensure disclosure of clear and complete patent information, in many cases,it has been noted that “not all patents were published in a sufficiently clear and comprehensive way,that not all offices were as vigorous as one should be and that the patent were not necessarily a veryreliable source of technological information”.36 Hence, the following analysis will put forward someproposals on how the adoption of quality standards for patent applications might enhance qualitypatent information.

How Can Improved Patent Application Standards Enhance Patent Information Quality?Specialists have highlighted that voluminous patent applications undermined patent informationquality (Mino, 2006). Thus, it has been suggested that a key aspect of maintaining high-qualitypatent information is to impose a standardized and consistent terminology as per the title and theabstract. In so doing, this will allow searchers to easily find the most relevant patent information.Similarly, because today’s applications are tomorrow’s prior art, examiners are also encouraged toamend the wording of the title, the abstract or to add a figure to the abstract. The key criterion forsuch amendments is facilitating retrieval of patent information by improving the clarity of the titleand creating searchable entries.

Additionally, examiners may add classification symbols and search report to the patent applica-tion (Scott, 2010). Similarly, other specialists have also articulated that quality patent informationdepends on how scrupulously the patent application has been drafted. Based on the belief that ap-plications are drafted not only for the inventor or the patent office but also for the public, someguidance ought to be provided to enhance the drafting of patent applications so they contribute to areliable search and ultimately to high-quality patent information. For instance, this might be attain-able by proceeding to a pre-filing search that helps set the application on the right track, avoidingan irrationally broad independent claim; referencing all the claims and avoiding multiple indepen-dent claims unless reasonably justified; clear, precise and concise specification sentences; pertinentdrawings enabling the skilled person in the art performing a patent search to understand as much aspossible the drawing (Kovac, 2010).

Apart from that, commentators have suggested that information regarding the appropriate priorart is most likely to be known only to the patentee and his competitors.37 This results in creatingan asymmetry between the patentee’s information and the information possessed by the examiners(Kesan, 2002). Because enhancing disclosure of prior art standards might have a significant impacton both patent quality and quality of patent information, it has become compulsory under the EPO



rules to disclose results of any search conducted by a national or an international searching authoritywith respect to an application from which the European or international application claims priority.38

This new rule is expected to pave the way for more stringent information disclosure requirements atthe EPO that is likely to increase the quality of the disclosed patent information.

It is also expected to enhance patent quality.39 First, prior to drafting the patent application, thepatentee has to search patent databases to identify the relevant state of the art that will be disclosedas part of the description. In this crucial phase, quality patent information helps the applicant geta better indication of the prior art that increases the likelihood of obtaining a quality patent forhis invention. Second, during the prosecution phase, quality patent information is expected to helpthe examiners easily check the disclosed prior art, examine the patentability condition and thereforeissue a quality patent. Third, easy retrieved patent information allows third parties to either initiatepre-opposition procedure if they believe that the disclosed prior art is not complete or inaccurate,or, contribute to the examination procedure by submitting relevant prior art. In both cases, they willcontribute to enhancing the quality of the issued patent (WIPO, SCP 13/5, 2009).

Conversely, by enhancing the quality patents, the examiners will determine whether or not theinventor has kept his part of the bargain that is to say, whether quality patent information has beendisclosed.40 While patent offices argue that patent quality is directly linked to the accurate applicationof patentability standards, assessing the correctness of the patent office’s work is difficult. 41 Severalfactors intervene in altering patent quality. For instance, novelty is assessed against the prior art thatis generally encompassed in databases. However, when performing their research reports, examiningpatent offices do not necessarily refer to the same standards. On the whole, international patentadministration, granting low-quality patents is generating patent information that might not be ofgreat pertinence and usefulness for development purposes.42 Under these circumstances, authors haveconsidered that developing countries should be thinking about ways to prevent the consequences ofpoor quality patents (Blakeney, 1989; Drahos, 2007).

In this respect, commenting on the WIPO recommendations made in the framework of itsDevelopment Agenda, the Indian Delegation has suggested that patent information is a unique sourceof technological knowledge as well as legal information. Therefore, access to such information is notonly relevant to certain development activities but also to improve examination of patent applicationthat will positively impact the quality of issued patents (WIPO, SCP13/5, 2009; WIPO, SCP/14/3,2009). Aware of the interaction between patent quality and quality patent information, the UnitedKingdom and Canadian Delegations have articulated a proposal based on the three actions.

First, improving patent quality needs the enhancing of patent office’s technical infrastructureby focusing on information technology solutions improving access to patent information relevantto patentability. Second, improving search and examination capacity necessitates setting up of newsources of information or new and improved ways of retrieval of existing patent information; that isto say enhancing quality patent information (WIPO, SCP 16/5, 2011). Third, promoting informationexchange on quality of patents needs the identifications of areas for improvements of patent officeprocess affecting patent quality. Process improvements are meant to ensure an appropriate degree ofquality focusing on search and examination process (WIPO, SCP 16/5, 2011).

Suggestions on Improving Prior Art Disclosure for the Betterment of Patent Information QualityFrom these insights, scholars have attempted to conceptualize an improved prior art disclosure thatis meant to enhance the quality of the disclosed patent information and ultimately enhances thequality of the issued patent.43 Currently, the disclosure of prior art is based on the following premise.First, the patentee submits an enabling disclosure of the invention including the material prior art.Second, the society, represented by the patent office, grants the inventor a contingent set of exclusive

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rights. However, this grant is not unconditional. Rather, the public reserves certain residual rightsto invalidate or revoke the issued patent in the event, the patent is found to be invalid. This stage isreferred to be the post-issuance patent litigation. In different words, the current system is based on ageneral presumption of validity. In return of granting the presumption of validity, the patent office isexpected to receive a meaningful list of material prior art.44

However, in practice, this system has been described as based on a Faustian bargain (Kesan,2002). Thus, attempting to overcome this situation, it has been suggested to the public to relinquishits residual invalidation right; and instead of granting a presumption of validity in all cases, the patentoffice, will grant a specific presumption of validity only when it receives an expanded disclosure ofpatent art together with an explanation on how the claims are patentable over the prior art (Kesan,2002). This specific presumption is believed to benefit both the society and the patentee. As far asthe society is concerned, it will guarantee a better deal in the bargain since the patent would not beinvalidated by a court on the basis of the prior art unless proof is made to establish that no reasonableexaminer would have issued the patent on the disclosed prior art.

Concurrently, it will strengthen the patentee’s position as he will be granted a patent that is lesslikely to be vulnerable to challenges. Thus, under the expanded disclosure system, the patentee will beincentivized to maximize prior art disclosure that will reduce the information asymmetry between thepatentee and the patent office and reinforce the patentee’s chances to acquire a more robust propertyright (Kesan, 2002). If the patentee does not elect to provide an enhanced prior art disclosure asoutlined above, the patent office, on behalf of the society, retains all residual rights to invalidate thepatent in case of post-issuance litigation. Additionally, no presumption of validity should be granted(Barton, 2000; Kesan, 2002; Lemley, 2001).

Accessing Patent Information for Development

At the outset, it should be recalled that patent information that can be accessed and exploited bythird parties without the permission of the patent holder, represents technical knowledge that isin the public domain.45 When defining this term in relation to patent law, it generally refers tothe knowledge, ideas and innovation over which no person or organization has any property right.Perceived as public property, such inventions can be used by anyone who can build upon them withoutrestrictions (WIPO, SCP/13/5, 2009).

Conversely, the concept of public domain ought to be analysed in the light of another economicconcept that is public goods in opposition to private goods. Thus, one of the primary results of thepatent system is to convert private goods into public goods as they become part of the public domainas soon as the protection granted by virtue of the patent expires.46 So how can inventions get intothe public domain? At first, the analysis will investigate how the patent system recognizes access topatent information. Second, based on the fact that patent rights are limited in their geographicalapplicability, term and scope, the research will analyse “gates” allowing access to patent informationand, third, try to investigate barriers hampering access to patent information.

The Patent System Recognising Access to Patent InformationThree issues will be examined to illustrate how the patent system allows access to patent information.First, the principle of independence of patents, interpreted in its broadest sense, signifies that grantingof a patent in one country for a given invention does not oblige any other member country to grant apatent for the same invention.47 Additionally, it implies that a patent cannot be refused, invalidatedor otherwise terminated in any member country on the basis that a patent for the same invention hasbeen refused or invalidated, or that it is no longer maintained or has been terminated, in any other



country. Accordingly, the fate of a particular patent in any given country has no influence on thedestiny of a patent for the same invention in any of the other countries.48 In light of the above, theprinciple of independence seems to bring a first and considerable attenuation to the exclusive rightgranted by virtue of patents.

Second, because the PCT seeks patent protection for an invention simultaneously in severalcontracting States of the PCT by filing an international patent application, it has been quite often im-properly believed that the PCT confers an international patent to the inventor.49 Quite the opposite,the PCT is another illustration that patents are fundamentally national and independent. Undoubt-edly, under the PCT, the inventor will save money and time by applying a single application, usingone language, which will have the same effect in each of the designated countries party to the PCT.His international application is subjected to a centralized international publication, to an interna-tional search report and an international preliminary examination.50 Yet, all this corresponds to theinternational phase of the PCT. Once the national phase starts then national processing commencesand national patent offices of the designated countries will apply the standard national procedures.51

Stated differently, submitting an international application will not necessarily lead to all nationalpatent offices of designated countries granting protection to the invention.52

Third, it is often believed that a European patent grants the holder a protection in all Europeancountries. Indeed, though the request for the grant of a European patent is submitted, examined andthe patent is delivered by the European office,53 the patent can be enforceable only in contractingStates to the EPC.54 More accurately, a European patent granted by the EPO may be revokedby national courts of contracting states and the revocation can be pronounced in the form of alimitation of the claims, the description or the drawings.55 Therefore, this consolidates the conclusionthat international protection for inventions does not yet exist, and even regional patents will notprevent national courts from revoking the patent within the framework of their jurisdiction.56 As aresult, an invention protected in a specific country does not mean that it is automatically protectedin all countries, which makes the protection granted by a patent quite limited. Typically, the patentis a particular legal title because it is limited as regards the term and the territory of the protectionconferred by this title of property.

In this context, intellectual property as a whole has been defined as encompassing rights to novelideas contained in tangible product of cognitive effort (Amani, 2007). The result has historically beenthat these rights are limited in time, limited in scope, and are granted only to authors and inventors whomeet certain minimum requirements (Lemley, 2005). As far as the term of protection is concerned, itcan be shown that the Paris Convention did not state the term of protection granted by the patent.Nevertheless, according to TRIPS provisions, protection granted by patents will not terminate beforethe expiration of a 20-year period, counted from the filing date.57 Most national legislations, suchas the UK Patent Act,58 the French Code of Intellectual Property59 and the Tunisian Patent Law60,have established the same term, by stating that protection conferred by a patent is limited to 20years starting from the date of filing the application for the patent.61 Patents may confer protectionregionally but commonly within national borders, as the US patent act states that the patentee maygrant and convey an exclusive right under his application for patent to the whole or any specifiedpart of the United States.62 Therefore, taking all of these considerations into account, territorial andsubstantive limitations characterizing patents weaken the protection granted by virtue of this legaltitle, and facilitate access to inventions generated by developed countries. Hence, a patent that is notprotected in a given country, or is no longer in force, can be used without infringing the exclusiveright. In brief, the exclusive right granted in counterpart of the patent disclosure does not representan absolute impediment to the accessibility of technical knowledge. That said, what are the gates topatent information?

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Scenarios under Which Patent Information Can be AccessedThe patent system incorporates several “gates” through which an invention eventually falls outsideof the scope of patent protection. Third parties, particularly in developing countries can monitorthose gates using patent information. Hence, patent information is perceived as an outstanding toolto establish whether an invention is the public domain. The first category corresponds to the caseswhere there is no legal restriction on use. These are inventions that fall down in the public domainon the basis that there is no legislation establishing property rights over the work. That is to say,the subject matter of the invention is not eligible to protection by patent or simply excluded fromprotection.63

A second set of patents comprises inventions that are patentable under the regulation of thecountry where the patentee is seeking protection. However, the application is incomplete or itsexamination resulted in non-compliance with the patentability conditions (Brosso et al., 2003). Thethird category refers to all inventions for which the term of 20 years has expired. As previously stated,patents are granted for a limited period, at the end of which the invention will be considered de factoas an element of universal knowledge, and the patent will no longer be in force.

A fourth category that represents another case of patent protection expiration corresponds to thenon-renewal of the annual fees. The vast majority of patent laws have established that maintenanceof granted patents in force requires a renewal fees to be paid. Inventions for which the inventor wasgranted a patent but failed to pay the renewal fees results in the forfeiture of the concerned patent.In this case, the patent shall cease to have effect at the end of the period prescribed for payment.64

Emergence of more competitive technologies on the market is one of the reasons that might explainthat many patents are abandoned, not renewed during their patent life. In this respect, data showthat only a small amount of granted patents is maintained in force for the full term of 20 years.65

The fifth type of inventions that can be in the public domain refer to inventions protected in somedesignated countries but not in others. Given the fact the patent protection can be costly and timeconsuming, protection of inventions obeys to a strategy by which the patentee is called to determinethe countries where it is profitable for him to seek protection (Bednarek, 1994). Consequently, incountries where no patent has been applied for, the invention is considered in the public domain andcan be utilized. Sixth, a patent holder loses his exclusive right if the validity of his patent has beenchallenged wholly or partially by a third party (Stauder, 2007). Lastly, mention can be made to casessuch as research and “Bolar” exceptions where certain uses are allowed under specific conditions andlimitations.66

In short, an invention is considered in the public domain if there is no legal constriction for itsuse by the public. However, sometimes, it can be simplistic to claim such an affirmation. This can beillustrated by the following examples. One example is the case where an off-patent cannot be exploitedwithout the consent of another patent holder who has claimed a broader scope of technology coveringthe technology that is no longer protected. In this case, though the desired technology is in the publicdomain, its utilization requires the prior consent of the holder of the extended patent (WIPO, SCP13/5, 2009).

A different example can be found in a marketed product that might be subject to a multitude ofintellectual property protection at the same time. It can be protected by virtue of a patent, industrialdesign, trademark and even by copyright. In this particular case, the expiration of one type ofintellectual property does not mean necessarily that the product is free from all protection.67 In brief,the above examples are meant to draw attention to the fact that though the patent system allowsaccess to patent information that is freely available in the public domain, yet it is of paramountimportance to observe due diligence and precaution while accessing this information. In this context,potential exploiters of technologies in the public domain might seek a “freedom to operate” legal



opinion whereby a patent counsel produces a strategic analysis on whether the making, using, sellingor importing of a given product or process, in a particular geographic market, at a specific time, isfree from the potential infringement of third-party intellectual property right (WHO, WTO, WIPO,2011). On the whole, patent information can be accessed and utilized under several scenarios. Yet,various barriers might hinder access and utilization of this technical knowledge for development.

Barriers Hampering Access to Quality Patent InformationAfter being disclosed by the inventor, patent information can be accessed only when the patentoffice has laid it open to third parties for public inspection. This section will try to examine howthis process might hamper access to patent information.68 First, patent information is commonlydisclosed to the public after 18 months from the filing date or the priority date or even earlier.69

The publication ensures earlier disclosure of the technical contents and of potential claims in respectof the patent rights. Rationally, during the period between the publication of the patent applicationand the grant of the patent, the inventor might see his invention exploited by a third party withouthis authorization. Given this risk, the inventor may prefer to keep his invention secret and preventthird parties from accessing it; especially, in countries where the patent offices conduct substantiveexamination that may take years before the patent is issued.70

Second, during the prosecution of the patent application, examiners may exchange a considerableamount of technical information with the inventor as well as third parties. For instance, the patenteemay be notified that his application may not meet fully or partly the patentability conditions. The ap-plication as well as the granted patent can also be amended. Under some jurisdictions, an oppositioncan be filed by a third party either before or after the grant of the patent. Additionally, an adminis-trative appeal procedure can take place that results in the exchange of a number of communicationswith the competent appeal body.71

All this information constitutes a huge source of technical information that provides the up-to-date legal status of the patent application. Concretely, it informs the users whether a patent has beengranted, a maintenance fee was paid, an application or a patent has been withdrawn, abandoned orexpired or simply whether any amendments or corrections were made. Generally, patent laws providethat this information is kept secret. It is laid open to the public after the correspondent patentapplication is published. In practice, this information is barely disseminated and hardly accessible atthe global level for its wider use. This undoubtedly increases legal uncertainty in the use of patentinformation. Logically, information concerning a change in the ownership of the patent, the status ofthe licenses and other legal rights and obligations like a court decision relating to the patent representan integral part of the legal information. Users of patent information ought to get full access to thisinformation to be able to decide on whether the invention is in the public domain or whether it isappropriate to engage with the patent holder in licensing agreements (WIPO, SCP/13/5, 2009).

More importantly, Paris Convention stipulates that a period of not less than 6 months is allowedfor the payment of the maintenance fees.72 This rule is applied differently from a country to another.73

Also, failure to comply with a time limit for an action before the patent office and the reinstatementof patent rights are dealt with differently by national legislations.74 Likewise, time limits to requestjudicial review are different from one country to another. All these non-uniformities harden accessto patent information since they necessitate a thorough understanding of the applicable patent law ineach given country. This might be hard to achieve especially in developing countries where expertisein patent law might be insufficient and sometimes deficient.

Third, considered as a substantial source of patent information, national patent registries areexpected to provide legal certainty for users about the licensing situation of the patent.75 Nevertheless,since licensing agreements and security interests often involve sensitive commercial matters; national

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legislations tend to limit disclosure of such information to the public that represent another examplethat shows how in practice access to patent information may be hampered (WIPO, SCP 13/5, 2009).Fourth, court decisions invalidating granted patents or revising patent offices decisions representanother category of significant information that is needed for the understanding of the legal statuteof a patent. Despite the importance of such information, it poses two concerns.

The First issue to be considered is whether this information is publically accessible. The Secondconcern relates to its location. Can it be found in the patent registry or in a specific record? Fifth, thereis no world-wide database directed to furnishing an exhaustive list of public domain patent documents(Brosso et al., 2003). A patent researcher has to use patent databases by applying the internationalpatent classification (IPC) rules.76 Despite major efforts to unify and simplify the classification ofpatent information, patent offices are still facing difficulties (WIPO, SCP/14/3, 2010; Schellner,2002). Commenting on the IPC system reform in 1999, the Swedish Patent and Registration Officeconsidered that the problems with the IPC had grown to a point “where even experts have troublemaking accurate searches”.77

Recently, for the significant benefit to stakeholders of developing a transparent and harmonizedapproach to a global classification system of patent documents, the USPTO and EPO have agreed toexplore the development of a joint classification system based on the European Classification system.The proposed system will incorporate the best classification practices of both offices, aligned withthe WIPO classification and the IPC structure.78

Sixth, the increasing diversity of languages used to draft patent applications represents an issuethat might hamper patent information quality (WIPO, SCP 14/3, 2010). A total of 65% of PCTinternational patent applications are published in English. Hence, when searching using Englishkeywords, only 65% of the mentioned patent documents are being searched, with the remaining 35%not being accessible as they are drafted in other languages (WIPO, SCP 13/5, 2009). The increasingamount of technical information produced by Asian countries such as Japan, China and SouthKorea renders the readability issue more critical ( Choi, 2009; Wang, 2009; Wechsler, 2009). Lastly,patent thicket can be an issue that obstruct access to patent information and affect its quality. It hasbeen argued that increasing numbers of patents represent a particular danger for the developmentof “thickets” of patents with overlapping claims. The result is businesses may find it hard or evenimpossible to identify the patent holder they might be in conflict with or with whom they shouldapproach for a licence (Bessen, 2003; Hargreaves, 2011; Holman, 2006; Stotter, 2010). At this stage,it might be of interest to examine how these barriers are being addressed by WIPO in the frameworkof its Development Agenda.

Towards an International Policy Enhancing Access to Quality Patent InformationRelying on its patent administration, the United Kingdom has been decisively pursuing a policy tomake the patent system a source of technical information (Cornish and Llewelyn, 2010). Interna-tionally, this kind of policy can be reflected by WIPO through its Development Agenda where patentinformation is prominent for its rising role in contributing to access and dissemination of scientificand technical information to the developing world. Hence, at least six of the 45 recommendationscontained in the Development Agenda refer to patent information services. This policy consists offacilitating access to specialized databases for the purposes of patent searches; facilitating access toknowledge and technology to foster creativity and innovation; promoting the transfer and dissemina-tion of technology, taking appropriate measures enabling developing countries to fully benefit fromflexibilities provided for in international agreements, advising on how to gain access to and make useof patent information particularly in areas of special interest to the requesting developing country.79



The implementation of these recommendations is expected to contribute to an effective reductionin the knowledge gap between developed and developing countries. Initial steps have been taken tostart implementing this policy. Pertinently, “Access to Specialised Patent Information” (ASPI) serviceseeking to enable patent offices, academic and research institutions in 115 developing countries tobenefit from access to patent content tools, with the goal of promoting the integration of less-developed countries into the global knowledge economy.80 WIPO also initiated the “Technology andInnovation Support Centres” (TICs) project designed to provide innovative structures in developingcountries with access to patent databases, high-quality technology information services and otherrelated services such as the coordination of a transfer of skills as well as sharing of know-how betweenusers of the TIC. This project is meant to reinforce and intensify companies and researchers capacityto best make use of the technological information available in patent databases. 81

Commenting on these international initiatives, the Delegation of Brazil speaking on behalf ofthe Development Agenda Group articulated that “merely facilitating access to the available patentinformation did not guarantee the transfer and the dissemination of technology”. A similar view hasalso been articulated by the Delegation of the Bolivarian Republic of Venezuela who pointed out that“mere dissemination of low quality patent information would not ensure transfer of technology”.82

In the same wording, the issue of poor quality patent information has also been expressed bythe Brazilian Delegation that, while highlighting the importance of a “Global-one-Stop Shop”mechanism to access patent information, it also stressed the fact that “this would not be suitableunless the quality of the information provided was useful and of high standard”.

Hence, given the lack of comprehensive and full description in the patent applications, it might besuggested that improving the utilization of patent information involves a thorough study on sufficientdisclosure of patent information that should precede the setting up of any multilateral database. Suchstudy on sufficiency of disclosure may comprise aspects related to the refusal to grant a patent, or therevocation of a patent on the ground of insufficient disclosure as well as the disclosure requirementsincluding the transfer of “know how” (WIPO, SCP/13/5, 2009; WIPO, SCP/14/3, 2010). This isin line with the WIPO Development Agenda advocating that dissemination of patent informationshould be pursued in a way supportive of development and transfer of technology. To this end, thepatent system ought to ensure that the patentee reveals the contents of his invention in a manner thatcan be replicated by developing countries.83

Related to the lack of comprehensive and meaningful disclosure of patent information arisesthe problem of the legal uncertainty of patents status that may have consequences on the use ofpatent information under domestic patent laws. On this basis, it might be suggested to explore thepossibility of creating a database including information about administrative actions related to patentreexamination, litigation, court rulings and arbitral decisions.84

Apart from that, various WIPO’s member States have voiced the need for expanding and en-hancing the PATENTSCOPE database to create a global database for patent information that is incompliance with the WIPO Development Agenda.85 Undoubtedly, benefits of such a universal portalon facilitating access to patent information are enormous.86 However, the success of such endeavourmight largely depend on the implementation of a range of factors. First, if there will be no free accessto the information, this might be an obstacle for developing countries to utilize this technical knowl-edge bearing in mind that fees related to accessing patent information can be quite high. Second,digitization of patent information can be a valuable path towards enhancing accessibility to patentinformation, on condition that the portal aims to offer structured data and safeguards consistencyand transparency of the information.87 Third, it can be suggested to add more analytical informationon the use of technical information; precisely by focusing on intermediate technologies as the levelof patented inventions generated by the developed world might not meet developing countries needs

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to build a systematically accumulated technological knowledge. Technologies for development mightbetter respond to developing countries basis needs such as food security, water purification and en-ergy matters.88 Fourth, it might be also of great interest to expand the content of this global databaseto encompass not only PCT patent applications but also non-PCT published applications as well asother nonpatent literature.89 Fifth, accessing patent information by developing countries ought tosecure necessary technological infrastructure including translation facilities as well as appropriatecapacity building particularly in the area of specialist in patent information.90

Conclusion

The paper is based on the premise that disclosure of patent information is essential for development.91

Immense quantities of patent information are freely available but not always easily retrieved (Hallet al., 2009). Thus, the question posed is related to the extent to which substantive disclosure rulescan secure the release of quality patent information that can be utilized for development. To thisend, the paper has made the argument that clear and complete disclosure might not be necessarilyadequate to secure disclosure of quality patent information so that access and exploitation of thistechnical knowledge is less than optimal in developing countries. In the exposition of this contention,in comparing different patent laws, the research has highlighted disparities between these laws. Hence,while most patent laws require clear and complete disclosure, the US patent law requires the patenteeto disclosure clear and complete disclosure along with the best mode of implementing the invention.92

In broader terms, improving the disclosure standard might require strengthening the disclosure ofprior art.

First, because inventions are disclosed by indicating the claimed novelty and inventiveness notonly by reference to existing state of the art but also by reference to what is already known as inmany cases, the patentee furnishes a history of the technological development in the field to whichthe invention is related to establish the level of novelty of the claimed invention.93 Second, since fulldisclosure of prior art is needed to establish the novelty character of the invention, this might alsohelp improve the quality of the issued patent. Additionally, the paper has suggested various measuresthat might act as guidance to improve the drafting of patent applications.

Apart from that, the research has suggested that improving patent information quality in itselfmight not be sufficient enough to secure access to this technical knowledge. It is not enough toestablish that huge quantities of patent information are available; developing countries ought to beable to access it.94 Because availability of information does not always mean that it is accessible, thepaper has analysed impediments to the accessibility of patent information showing that in practicalterms, accessibility of patent information is quite poor. Thus, enhancing access and utilization ofpatent information involves not only the improvement of patent disclosure requirements but also thebetterment of the rules governing the disclosure of this information to the public. It also involves theimprovement of the technical infrastructure through which patent information is accessed. Lastly,in view of the WIPO Development Agenda, the research attempted to examine how accessibilityto patent information has been addressed for the benefit of developing countries. In light of therelated analysis, the paper showed that these programmes might be enhanced particularly by upgrad-ing patent office’s technical infrastructure and by enhancing their capacity to provide appropriateexpertise in retrieving and commercializing relevant patent information for development.

About the Author

Nefissa Chakroun is a Ph.D. candidate from Queen Mary at the University of London. Centrefor Commercial Law Studies, Queen Mary Intellectual Property Research Institute. Currently, I



am a guest researcher at Max Planck Institute for Intellectual Property and Competition Lawin Munich. I am also a senior public service counsellor and former Director of the IntellectualProperty Department at the Tunisian Ministry for Higher Education and Scientific Research; e-mail:[email protected]/[email protected].

Notes

The author would like to acknowledge the kind and very useful guidance of her supervisors Dr. Gail ElizabethEvans, Professor Spyros Maniatis from Queen Mary and Dr. Henning Große Ruse—Khan from Max PlanckInstitute. This research has been possible through the receipt of the Intellectual Property—Herchel SmithScholarship.

1 See for example esp@cenet <http://www.epo.org/patents/patent-information/free.html> [Accessed Jan-uary 2011]. See also WIPO, (2010) SCP/14/3 at 9.

2 WIPO (2010) “World Intellectual Property Indicators” p. 66.3 By the end of 2007, the Trilateral Offices had 93% of patents in force worldwide. See Japanese Patent Office,

“Four Office Statistics Report”, (2009, p. 6). These trends are corroborated by WIPO indicators. The USaccounts for the largest share of patents, 28%, in force by destination, followed by the Japanese PatentOffice that holds 19%. China and the Republic of Korea residents, respectively, own 95.1% and 84.6% ofthe patents in force in their countries. See WIPO (2011a) “World Intellectual Property Indicators” p. 66.

4 See WIPO, Circular CN.3027. Full results and related study paper were presented to the WIPO Committeeon Development and Intellectual Property.

5 See WIPO (2010a) SCP/14/3, p. 10. The issue of accessibility of legal status information has been examinedwithin the framework of the project “Intellectual Property and the Public Domain” carried out under theWIPO Development Agenda (CDIP/3/4 Annexure I).

6 The term “patent document” does not only refer to “patent specifications”. It refers to “patent applications”as a whole.

7 Patent Law Treaty 2000, article 6(1), Forms or Contents of Application: “Except where otherwise providedfor by this treaty, no contracting party shall require compliance with any requirement relating to the form orcontents of an application different from or additional to: (i) the requirements relating to form or contentsthat are provided for in respect of international applications under the PCT; (ii) the requirements relatingto form or contents compliance with which, under the PCT, may be required by the Office of, or actingfor, any State party to that Treaty once the processing or examination of an international application, asreferred to in article 23 or 40 of the said Treaty, has started; (iii) any further requirements prescribed in theRegulations”.

8 For instance, see UK Patent Act 1977, article 14 (2)(a). See also EPC 1973, article 75(1). See explana-tion at Rule 26 available at <http://www.epo.org/law-practice/legal-texts/html/epc/1973/e/r26.html#FOOTNOTE-34> [Accessed 16 August 2011]. See also European Patent Convention 1973, article 79(1).

9 See TRIPS Agreement 1994, article 29(1); EPC 1973, article 83; PCT 1970, article 5. For reference tonational and regional laws, see Standing Committee on the Law of Patents, 12/3 Rev, Annexure II.

10 See PCT 1970, article 6. See also, EPC 1973, article 84.11 EPC 1973, article 78(d). See also rule 32 “Form and Content of the Drawings” available at <http://www.

epo.org/law-practice/legal-texts/html/epc/1973/e/r32.html> [Accessed 16 August 2011].12 EPC 1973, article 78(e). See also rule 33 “Form and Content of the Abstract" available at <http://www.

epo.org/law-practice/legal-texts/html/epc/1973/e/r33.html> [Accessed 16 August 2011].13 TRIPS Agreements 1994, article 29(2) “Members may require an applicant for a patent to provide infor-

mation concerning the applicant’s corresponding foreign applications and grants”.

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14 See Proposal of the European Community and its Members States (2004) “Disclosure of Origin or sourceof Genetic Resources and Associated Traditional Knowledge in Patent Applications”.

15 WIPO (2009) “Examination of Issues Regarding the Interrelation of Access to Genetic Resources andDisclosure Requirement in Intellectual Property Rights Applications’ Transmitted to the Conference ofParties of the Convention on Biological Diversity by the decision of the General Assembly at its Thirty-Second Session, at 101–102; see Convention on Biological Diversity, opened for signature on 5 June1992, at the United Nations Conference on Environment and Development (the Rio “Earth Summit”). Itbecame effective on 29 December 1993; Nuno Pires de Carvalho, (2000) pp. 370–401; see also the NagoyaProtocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from theirUtilization to the Convention on Biological Diversity, adopted on 29 October 2010 in Nagoya, article 6(1)(2)(3) “Each party requiring prior informed consent shall take the necessary legislative, administrativeor policy measures, as appropriate, to: provide for legal certainty and transparency of their domestic accessand benefit-sharing legislation or regulatory requirements; provide for fair and non-arbitrary rules andprocedures on accessing genetic resources; provide information on how to apply for prior informed consent;provide for clear and transparent written decision by a competent national authority, in a cost-effectivemanner and within a reasonable period of time”.

16 WIPO (2009) Handbook on Industrial Property Information and Documentation.17 See further developments concerning the new disclosure requirements at the EPO. Particularly, EPC, Rule

141 has been amended to require the applicant to submit prior art research reports that have been issuedby other offices in relation to the invention.

18 Pennock v Dialogue 27 US 1- 23 (1829). See also Fritz Machlup and Edith Penrose (1950).19 TRIPS article 29(1).20 European Patent Convention 1973, article 83.21 UK Patents Act 1977, article 14(3).22 French Intellectual Property Code, Law n 2004–1338, article L612–5.23 US Patent Act, 35 USC, paragraph 112.24 Synthon v SmithKline Beecham (2006) RPC 10 HL.25 Kirin-Amgen v Hoechst Marion Roussel (2005) RPC9 [116]; Biogen v Medeva (1997) RPC 1 HL. See also

H. Lundbeck A/S v Generics and Ors (2008) EWCA Civ 311 whereby the court of appeal held that wherethe invention claimed by the patent is a product as such, it is sufficiently enabled if the patent specificationdiscloses at least one way of making it.

26 Biogen v Medeva (1997) R.P.C.1 HL.27 T 14/83, OJ 1984, 105; see also T 169/83, OJ 1985, 193 Case Law of the Boards of Appeal of the European

Patent Office, 6th edn, 2010, 229. Available at http://documents.epo.org/projects/babylon/eponet.nsf/0/1ae7315e321e933ec12577bd0024d650/$FILE/Case_law_of_the_boards_of_appeal_2010_en.pdf [Ac-cessed 14 November 2010].

28 Ibid T 202/83, T 179/87 of 16.1.1990; T 435/89; T 82/90; T 126/91. See also T 169/83, OJ 1985, 193; T308/90; T 818/93.

29 Ibid T 409/91, OJ 1994, 653; T 435/91, OJ 1995, 188; T 172/99; T 1288/01. See also T 1121/03; T 369/05.30 Ibid T 1063/06 (OJ 2009, 516).31 T 792/00; T 811/01; T 1241/03; T 364/06.32 T694/92, OJ 199, 408.33 T 651/05. See also T 621/03; T 127/04.34 EPC 1973, article 100(b).35 T 988/02. See also T 1898/06.



36 Comment made by the Latino American Association of Pharmaceutical Industry (ALIFAR): see Com-ments made by members and observers of the Standing Committee of the Law of Patents on WIPOdocuments SCP/14/10 p.72.

37 Under the US prior art disclosure system, the prior art is listed in an “Information Disclosure Statement”without indicating the importance of the prior art references and without specifying how the claims canbe patentable over that prior art either. See John R. Allison and Mark A. Lemley (1998) “studying 202patents from 1989 to 1996 and finding that the probability of invalidation based on prior art cited in thecourse of prosecution was very low”.

38 EPC1973, r141 “An applicant claiming priority within the meaning of art 87 shall file a copy of the resultsof any search carried out by the authority with which the previous application was filed together with theEuropean patent application, in the case of Euro-PCT application on entry into the European phase orwithout delay after such results have been made available to him. The copy referred to in the previousparagraph shall be deemed to be duly filed if it is available to the European Patent Office and to be includedin the file of the European patent application under the conditions determined by the President of theEuropean Patent Office”. This rule has been amended by decision of the Administrative Council CA/D18/09 of 28.10.2009 (OJ EPO 2009, 585), entered into force on 1 January 2011. See also decision of thePresident of the EPO of 10 May 2010 on the filing of copies of search results under r141(1) EPC (OJ EPO2010, 600).

39 A quality patent is a patent that has been issued after vigorous examination of the patentability conditions.US Patent Act, Title 35, Part II, chapter 10, paragraph 101 (new, useful and obviousness); TRIPS, Part II,section 5, article 27(1) “Patents are granted for inventions that are new, involving an inventive step and arecapable of industrial application”. Same wording has been used by the EPC 1973, article 52(1), UK PatentAct 1977, article 1(1), French Intellectual Property Code, section 3, article L611–10(1),Tunisian PatentLaw 2000, article 2(1).

40 WIPO, SCP/13/5 p. 22. On this subject, WIPO, SCP, has agreed “to establish a work programmeelaborating options, measures and conditions, both legal and practical, that would be required to en-sure and, where necessary improve, the issuance of high-patent quality” (October 2010). Available at<http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_5.pdf>. [Accessed August 2011].

41 National Academy of Public Administration (2005, p. 62).42 As regards USPTO patent examination quality, see JL King (2003) Committee on Intellectual Property

Rights in the Knowledge-Based Economy. But see also Trilateral Statistical Report (2009, p. 19). WIPO(2009) report on the world Intellectual Property Indicators, p. 70. With regard to the EPO Patent quality,see (Staff Union of the EPO) Bruno van Pottelsberghe, “Quality v Quantity: Situation at EPO”. Availableat <http://econpapers.repec.org/paper/brewpaper/440.htm> [Accessed January 2011].

43 WIPO, SCP/13/5, p. 22. On this subject, WIPO, SCP has agreed “to establish a work programme elabo-rating options, measures and conditions, both legal and practical, that would be required to ensure and,where necessary improve, the issuance of high-patent quality”. Available at <http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_5.pdf> [Accessed August 2011].

44 See 35 USC 1994, at paragraph 282.45 Patent information that is not in the public domain can still be accessed but its utilization is subject to

the patent holder authorization after negotiations of a licensing agreement that will fix the terms andconditions of use and the payment of royalties.

46 Public good is a good that is unrivalled and non-excludable. The consumption of the good by one individualdoes not reduce its availability for others. No one can be effectively excluded from using it. In contrast,private goods are excludable and rival. WIPO, SCP/13/5, p. 110.

47 Paris Convention for the Protection of Industrial Property 1883, article 4bis (1) Patents: Independenceof Patents Obtained for the Same Invention in Different Countries “Patents applied for in the various

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countries of the Union by nationals of countries of the Union shall be independent of patents obtained forthe same invention in other countries, whether members of the Union or not”.

48 WIPO Intellectual Property Handbook: Policy, Law and Use (2004) at 5.34.49 Available at <http://www.wipo.int/pct/en/treaty/about.htm> [Accessed August 2011].50 Supra, at 5.283.51 Supra, at 5.28852 Though it is worth noting, that Peter Drahos in his book The Global Governance of Knowledge: Patent

Offices and their Clients (CUP, 2010) has argued that the PCT is bringing about substantive harmonizationand centralized acceptance of patents. See also recent attempts to modify the PCT system that has beencriticized as attempting to harmonize substantive patent law by allowing certain major PTOs decisionsas (rebuttable) presumption for fulfilling the respective domestic criteria. WIPO (2005) PCT/A/42/1,International Patent Cooperation. The UK Gower Review of Intellectual Property states that most nationalsearch and examination reports produced under the international phase of the PCT are ignored during thenational phase and the work duplicated by national/regional offices.

53 Available at <http://www.epo.org/patents/Grant-procedure/Filing-an-application/European-applications.html> [Accessed August 2011].

54 European Patent Convention 1973, article 1.55 French Intellectual Property Code, article L614–12.56 It is worth mentioning that on the 27 June, 2011 the EU Council agreed on a general approach to draft

EU regulations on the unitary patent for Europe patent system that would have been granted for the wholeEU territories, except countries that are not part of the unitary patent. On this subject see Council ofthe European Union, Brussels, 23 June, 2011, “Proposal for Regulation of the Council and the EuropeanParliament Implementing Enhanced Cooperation in the Area of the Creation of the Unitary PatentProtection” 11328/11-CODEC 995. Available at <http://register.consilium.europa.eu/pdf/en/11/st11/st11328.en11.pdf> [Accessed October 2011].

57 TRIPS, article 33.58 UK Patent Act 1977, article (25) (1).59 French Intellectual Property Code, Law N 2003–706 (JO 02/08/03), article L611–2.60 Patent Tunisian Law 2000, article 36.61 There are some specific cases where this term can be extended, such as in the pharmaceutical field. Medical

products, especially those that are the result of long and costly research, may be granted a supplementaryprotection certificate. See Council Regulation concerning the creation of a supplementary protectioncertificate for medicinal products N 1768/92 Official Journal of the European Communities N L/182/1.

62 US Patent Act, 35 USC at 26.63 Under a great number of patent laws, natural phenomena, laws of nature and abstract ideas are ineligible for

patent protection. Hence, they fall down in the public domain. On this subject see WIPO (2009) SCP/12/3Rev.2, Annexure II; WIPO (2009) SCP/13/3.

64 UK Patent Act 1977, article 25(3).65 See WIPO/GRTKF/IC/6/INF/4 (2004) where it has been reported that, much of the information con-

tained in patent specifications is freely available for public use, either because the owner has not paidrenewal fees or because the maximum term, usually 20 years, has expired. For instance, of the nearly twomillion UK patents published so far, barely one-tenth is still in force (Michael Blackman, The Patent Office,UK) p. 11.

66 “Many countries use this provision to advance science and technology. They allow researchers to use apatented invention for research, in order to understand to understand the invention more fully. In addition,some countries allow manufactures of generic drugs to use the patented invention to obtain marketingapproval without the patent owner’s permission and before the patent protection expire. The generic



producers can then market their versions as soon as the patent expires" this provision is called the “theregulatory exception” or “Bolar” provision”. See also Article 30 from TRIPS Agreement.

67 Although the different IP rights differ in subject matter and scope-–for example trade marks only protectthe sign to identify one’s goods and copyright only protects the expression of an idea, not the idea itself.Copyright protection covers the life of the author plus 50 years. Some countries provide for life of theauthor plus 70 years. Protection given by virtue of trademarks covers 10 years renewable.

68 Paris Convention for the Protection of Industrial Property 1883, article 12 (1)(2)(a) states that “eachcountry of the Paris Union undertakes to establish a special industrial property service and a central officefor the communication to the public of patents, utility models, industrial designs and trademarks. Thisservice shall publish an official periodical journal. It shall publish regularly: the names of the proprietors ofpatents granted, with a brief designation of the inventions patented”. Apart from such mandatory regularpublication rules, the Paris Convention does not provide for details on how this technical informationshould be “communicated to the public”.

69 See PCT 1970, (2)(a)(b).70 Ian Hargreaves (2011) “The most striking aspect of the patent system in recent years is the worldwide

increase in the number of patent applications causing delays in the granting process. These delays have ledto backlogs at patent offices. Meanwhile, in some business sectors patent proliferation is causing regulatoryblockage in the form of “thickets” of pre-existing patents and pending patents which impede genuineinnovators wishing to enter markets”. At 6.5.

71 See the European Patent Convention 1973, article 99(1) “Within nine months from the publication of themention of the grant of the European patent, any person may give notice to the European Patent Officeof opposition to the European patent granted. Notice of opposition shall be filed in a written reasonedstatement. It shall not be deemed to have been filed until the opposition fee has been paid”; Indian Patents(Amendments) Act 2005, section 25 “Where an application for a patent has been published but a patenthas not been granted, any person, in writing, represent by way of opposition to the Controller againstthe grant of patent on the ground that the applicant for the patent under or through whom he claims,wrongfully obtained the invention or any part thereof from him or from a person under or through whom heclaims”; see also the America Invents Act 2011 section 8 (amending 35 USC section 122(e)) on third-partyopposition.

72 Paris Convention for the Protection of Industrial Property 1883, Article 5 bis.73 For instance, the Tunisian Patent Law 2000 provides for the 6 months for the payment of the annual fees

with penalties.74 Patent Law Treaty 2000, Rules 12–13.75 Patent Law Treaty 2000, Rules 17 provides maximum requirements that the contracting party may require

under its applicable law.76 See WIPO (2009) WIPO Guide to Using Patent Information.77 See IPC/R1/99 Rev1 Annexure 10, 1–2. See also comments by the UK Patent Office. Available at

<http://www.wipo.int/ief-projects/c422/c422-a12_gbrp.pdf> [Accessed November 2010].78 EPO website <http://www.epo.org/topics/news/2010/20101025.html> [Accessed November 2010].79 See WIPO Recommendations at 8, 19, 25, 28, 30 and 31. Available on WIPO website <http://www.wipo.

int/ip-development/en/agenda/recommendations.html> [Accessed August 2011].80 See WIPO website at <http://www.wipo.int/patentscope/en/programs/aspi/eligibility.html> [Accessed

August 2011]; see also WIPO, “WIPO Patent Information Services for Developing Countries” (2002)<http://www.wipo.int/freepublications/en/patents/493/wipo_pub_493.pdf> [Accessed August 2011];on the same subject see: WIPO Patent Information Services (WPIS) < http://www.wipo.int/sme/en/documents/wpis.htm> [Accessed August 2011].

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81 See WIPO website at <http://www.wipo.int/patentscope/en/programs/tisc/2009> [Accessed August2011]. See also <http://www.wipo.int/patentscope/en/programs/aspi2010> [Accessed August 2011].This programme complements other WIPO initiatives including the Access to Research for Developmentand Innovation (aRDi) initiative launched in 2009 and services such as PATENTSCOPE R©. See also WIPO,SCP/13/5 at 94–95.

82 WIPO, Comments made by members and observers of the CSP on documents SCP/14/10 at 28.83 See recommendations number 25–28 and 29 from WIPO Development Agenda. See also International

Patent Cooperation Union, WIPO (2011) PCT/A/42/1at 12 Annexure I, 3; see also WIPO, PCT/WG/4/6(2011) .

84 Such a proposal has been articulated by the Knowledge Ecology International organization. WIPO,Comments made members and observers of the CSP on documents SCP/14/10 at 71. See also GRCoaracy (1982) pp.159–63.

85 Among these countries, mention can be made to Sri-Lanka, Spain, Uruguay, Russian Federation andBulgaria. The creation of a global patent information database would provide users a one-stop entry intothe world of patent information.

86 While PATENTSCOPE is a significant and global database of patent information, it is also importantto note that there as various other databases such as Espace net or Cambias Patent Lens. There are alsoseveral private patent databases specialized in different area of technology.

87 See Comments made by the Delegation of Spain on the WIPO, SCP/15/6 at 6. The exchange of search andexamination reports should comply with a minimum set of rules other ways it might result in the export ofpoor patent information quality.

88 See the Republic of Korea comments on WIPO (2009)SCP/13/8 at 52.89 See Indian delegation comments on the document WIPO (2008) SCP/15/6 at 4.90 In relation to translation of patent information, the Council of the European Union has agreed on a

general approach related to a proposal for a Council Regulation Implementing Enhanced Cooperation inthe Area of Unitary Patent Protection with regard to the Applicable Translation Arrangements, 11328/11.Brussels, 23 June 2011 at 6–10-11–20.

91 See United Nations Conference on Trade and Development, The Least Developed Countries Report, 2010.92 The America Invent Act 2011, section 15 (Revised 35 USC section 282(b)) has maintained the requirement

to disclose the best mode of implementation. However, it has completely removed the consequences in caseof violation of such requirement.

93 WIPO, “Patent Information and Development” at 14. Available at <http://www.wipo.int/edocs/mdocs/sme/en/wipo_wasme_ipr_ge_03/wipo_wasme_ipr_ge_03_5-main1.pdf> [Accessed August 2011].

94 See comments made on a report issued by WIPO on patent information dissemination. Available at<http://www.iqsensato.org/blog/2009/03/25/commentary-on-wipos-study-on-dissemination-of-patent-information/> [Accessed September 2011].

References

Allison, J. R. and Lemley, M. A. (1998) ‘Empirical Evidence on the Validity of Litigated Patents’, AIPLA QJ185, 26, 229–31.

Amani, B. (2007) ‘What’s Wrong with Intellectual Property Rights? And the Public Interest in Privatizing OurCommon Genetic Heritage’, Queen’s Legal Studies Research Working Paper No. 07-06 [online]. Availableat SSRN <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=991584> [Accessed October 2011].



Barton, J. H. (2000) ‘Reforming the Patent System’, Science, 287(5460), 1933–4.Bednarek, M. D. (1994) ‘Global Patent Strategy’, Managing Intellectual Property, 44, 12–23.Bessen, J. (2003) ‘Patent Thickets: Strategic Patenting of Complex Technologies’, [online]. Available at SSRN

<http://ssrn.com/abstract=327760> [Accessed October 2011].Bhattacharya, S. (2004) ‘Mapping Inventive Activity and Technological Change through Patent Analysis: A

Case Study of India and China’, Scientometrics, 61(3), 361–81.Blakeney, M. (1989) Legal Aspects of the Transfer of Technology to Developing Countries. ESC Publishing

Limited, Oxford.Buchanan, B. (2008) ‘Unlocking the Value of Patent Data: Patent Informatics Services at the UK Intellectual

Property Office’, World Patent Information, 30(4), 335–37.Choi, Y. C. (2009) ‘Korean to English Patent Automatic Translation (K2E-PAT) and cross lingual retrieval on

KIPRIS’, World Patent Information, 31(2), 135–36.Coaracy, G. R. (1982) ‘The Role of Patent Information in Relation to Transfer of Technology’, World Patent

Information, 4(4), 159–63.Cornish, W. and Llewelyn, D. (2010) Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights,

7th edition. Sweet & Maxwell, London.De Carvalho, N. P. (2000) ‘Requiring Disclosure of the Origin of Genetic Resources and Prior Informed Consent

in Patent Applications without Infringing the TRIPS Agreement: The Problem and the Solution’, Journalof Law and Policy, 2, 370–401.

Devlin, A. (2010) ‘The Misunderstood Function of the Disclosure in Patent Law’ Harvard Journal of Law andTechnology, 23(2), 401–46.

Drahos, P. (1996) A Philosophy of Intellectual Property. Dartmouth, Aldershot.Drahos, P. (2007) ‘Trust Me: Patent Offices in Developing Countries’ [online]. Available at SSRN

<http://ssrn.com/abstract=1028676> [Accessed October 2011].Drahos, P. (2010) The Global Governance of Knowledge: Patent Offices and Their Clients. Cambridge University

Press, Cambridge.Dutton, H. I. (1984) The Patent System and Inventive Activity during the Industrial Revolution. Manchester

University Press, Manchester.Edfjall, C. (2008) ‘European Patent Information 2007: EPO Policy Reformulated’, World Patent Information,

30(3), 206–11.European Community and its Member States (2004) Disclosure of Origin or Source of Genetic Resources and

Associated Traditional Knowledge in Patent Applications [online]. Available at <http://www.wipo.int/tk/en/genetic/proposals/european_community.pdf> [Accessed October 2011].

Fromer, J. C. (2009) ‘Patent Disclosure’, Iowa Law Review Fordham Law Legal Studies, 94, 539–606.Ghosh, S. (2004) ‘Patents and the Regulatory State: Rethinking the Patent Bargain Metaphor after the Eldred’,

Berkeley Technology Law Journal, 19(4) 1315–88.Graf, S. W. (2007) ‘Improving Patent Quality through Identification of Relevant Prior Art: Approaches to

Increase Information Flow to the Patent Office’, Lewis & Clark Law Review, 11, 495–519.Griliches, S. (1990) ‘Patent Statistics as Economic Indicators: A survey’, Journal of Economic Literature, XXVIII,

1661–707.Hall, B. H. and Harhoff, D. (2004) ‘Post Grant Reviews in the US Patent System – Design Choices and Expected

Impact’, Berkeley Technology Law Journal, 19(3), 989–91.Hall, M., Oppenheim, C. and Sheen, M. (2009) ‘Barriers to the Use of Patent Information in SMEs’, Intellectual

Property and Innovation Management in Small Firms, 7, 144–60.

218



Hargreaves, I. (2011) Digital Opportunity, a Review of Intellectual Property and Growth, an Independent Report.United Kingdom Intellectual Property Office, London.

Holman, C. (2006) ‘Clearing a Path through the Patent Thicket’, Cell Press, 125(4), 629–33.Kesan, J. P. (2002) ‘Carrots and Sticks to Create a Better Patent System’, Berkeley Technology Journal, 17(2),

763–97.King, L J. (2003) ‘Patent Examination Procedures and the Patent Quality’ Economic Research Service, US

Department of Agriculture, Patents in the Knowledge-Based Economy, 54–73.Kovac, W. (2010) ‘Documentation and Quality – Quo Vadis Patent System? A Patent Attorney’s View’, World

Patent Information, 32(3), 229–32.Lemley, M. A. (2001) ‘Rational Ignorance at the Patent Office’, North-western University Law Review, 95(4),

1495–1524.Lemley, M. A. (2005) ‘Property, Intellectual Property, and Free Riding’, Texas Law Review, 83, 1031.Machlup, F. and Penrose, E. (1950) ‘The Patent Controversy in the Nineteenth Century’, Journal of Economic

History, 10, 1–29.MacLeod, C. (1988) Inventing the Industrial Revolution: The English Patent System. Cambridge University Press,

New York.Matthews, D. (2010) Patents in the Global Economy. Strategic Advisory Board for Intellectual Property Policy,

United Kingdom Intellectual Property Office, London.Merges, R. P. (2011) Justifying Intellectual Property. Harvard University Press, Cambridge, MA.Mino, P. (2006) ‘Patent Filing and Searching: Is Deflation in Quality the Inevitable Consequence of Hyperinfla-

tion in Quantity?’, World Patent Information, 28(2), 117–21.National Academy of Public Administration (2005) US Patent and Trademark Office: Transforming to Meet

the Challenges of the 21st Century [online]. Available at <http://ceg.files.cms-plus.com/PruneJobsRelevantNAPAPublications/USPatentAndTrademarkOffice(%2363).pdf> [Accessed October 2011].

Olin, J. M. (2005) ‘The Disclosure Function of the Patent System (or Lack Thereof)’, Harvard Law Review,118(6), 2007–28.

Pavitt, K. (1985) ‘Patent Statistics as Indicators of Innovative Activities: Possibilities and Problems’, Sciento-metrics, 7(1–2), 77–99.

Schellner, I. (2002) ‘Japanese File Index Classification and F-terms’, World Patent Information, 24(3), 197–201.Scott, J. (2010) ‘Does the EPO Really Care about the Quality of Patent Information’, World Patent Information,

32(3), 233–6.Smith, P. A. (1986) ‘Patents as Sources of Technology’, World Patent Information, 8(2), 70–8.Stauder, F. (2007) ‘Exploiter les Brevets Disponibles’, Lettre Innovation, 4, 165.Trilateral Statistical Report (2009). Available at <http://www.trilateral.net/statistics/tsr/fosr2009.html> [Ac-

cessed April 2012].United Nations Conference on Trade and Development (2010) The Least Developed Countries Report. Available

at <http://unctad.org/en/docs/tdr2010_en.pdf> [Accessed April 2012].Wang, D. (2009) ‘Chinese to English Automatic Patent Machine Translation at SIPO’, World Patent Information,

31(2), 137–9.Wagner, R. P. (2009) ‘Understanding Patent-Quality Mechanisms’ University of Pennsylvania Law Review, 157,

2135–73.Wechsler, A. (2009) ‘Japanese, Chinese, Korean and Indian Patent Information in Comparison: Asia’s Rising

Role in Technology Disclosure through the Patent System’, Tsinghua China Law Review, 2(1), 103–57.Wilson, J. (2009) ‘On the Value of the Intellectual Commons’ [online]. Available at <http://www.philip-

conf.org/PAPERS/Panel7.pdf1> [Accessed September 2011].World Health Organisation, World Trade Organisation, World Intellectual Property Organisation (2011) Access

to Medicines, Patent Information and Freedom to Operate. Technical Symposium.



World Intellectual Property Organisation (2004) Intellectual Property and Genetic Resources, Traditional Knowl-edge and Folklore, Patents as Source of Technological Information in the Technology Transfer Process,WIPO/GRTKF/IC/6/INF/4.

World Intellectual Property Organisation (2005) Examination of Issues Regarding the Interrelation of Ac-cess to Genetic Resources and Disclosure Requirement in Intellectual Property Rights Applications,WIPO/IP/GR/05/3.

World Intellectual Property Organisation (2009) Dissemination of Patent Information. Standing Committee onthe Law of Patents, Thirteenth Session, SCP/13/5.

World Intellectual Property Organisation (2010a) WIPO Guide to Using Patent Information. World IntellectualProperty Organisation Publication, Geneva [online]. Available at <http://www.wipo.int/standards/en/>

[Accessed September 2011].World Intellectual Property Organisation (2010b) World Intellectual Property Indicators. WIPO Publica-

tion, Geneva [online]. Available at <http://www.wipo.int/freepublications/en/intproperty/941/wipo_pub_941_2010.pdf > [Accessed September 2011].

World Intellectual Property Organisation (2010c) Comments made by members and observers of the StandingCommittee on the Law of Patents on document SCP/14/4 ‘Transfer of Technology. Fifteenth Session of theCommittee on the Law of Patents.

World Intellectual Property Organisation (2010d) Comments made by members and observers of the SCP ondocuments SCP/13/5 ‘Dissemination of Patent Information SCP/14/3 Technical Solutions to Improve Accessto, And Dissemination of Patent Information. Fifteenth Session of the Standing Committee on the Law ofPatents.

World Intellectual Property Organisation (2010e) Transfer of Technology Standing Committee of the Law ofPatents, Fourteenth Session, SCP/14/4.

World Intellectual Property Organisation (2010f) Technical Solutions to Improve Access to and Dissemination ofPatent Information. Standing Committee on the Law of Patents, Fourteenth Session, SCP/14/3.

World Intellectual Property Organisation (2011a) Proposal from the Delegations of Canada and the UnitedKingdom, SCP/16/5.

World Intellectual Property Organisation (2011b) International Patent Cooperation Union, Assembly, EighteenthOrdinary Session, PCT WG/A/42/1.

World Intellectual Property Organisation (2011c) Patent Cooperation Treaty, The PCT’s Aims of DisseminatingTechnical Information, Facilitating Access to Technology and Organising Technical Assistance for DevelopingCountries. Fourth Session, PCT/WG/4/6.

World Intellectual Property Organisation (2011d) Hand Book on Industrial Property Information and Documen-tation [online]. Available at <http://www.wipo.int/standards/en/> [Accessed October].

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