Selected Contemporary Issues in Field of Patents

WIPO-UKRAINE SUMMER SCHOOL ON INTELLECTUAL PROPERTY – JULY 2011

Outline

SourceStanding Committee on Law of Patents

Three issuesPatent qualityExclusions and exceptionsTechnology transfer

Patent quality - 1; what is it?

Novelty inventive step adequate disclosure fair scope

Patent quality – 2; Why does it matter

Anti-competitive unjustified monopolies

Patent bargain not keptMonopoly in exchange for disclosure

International cooperation and trustPCT national phaseProsecution highways

Developing countriesAbility to challengeRe-registration

Litigation costs

Patent quality – 3; how to get it

Examiner competenceTrainingSearch toolsContinuing professional developmentPeer-to-peer review

Involving external expertsOpen access

Quality controlInternalExternal

Exclusions and exceptions – 1; main examples of exclusions

Inventions the exploitation of which is against ordre public or morality;Diagnostic, therapeutic and surgical methods for the treatment of humans and animalsPlant and animal varietiesPlants and animals other than micro-organismsEssentially biological processes for the production of plants and animalsInventions affecting national security

Exclusions – 2; main examples of exceptions

private acts for non-commercial purposesacts for the purpose of teachingacts for experimental purposes or scientific researchpreparation of medicines prescribed by doctorscontinued use by a prior usercertain uses on foreign vessels, aircraft and land vehicles which temporarily or accidentally entered the national territoryacts for obtaining regulatory approval for pharmaceuticalsacts performed for a farmer’s own use and for the development of new varieties

Exclusions and Exceptions – 3; policy considerations

Public welfareCompulsory licenses

CompetitionExhaustion

Exclusions and exceptions – some issues

Computer programmesBiotechnologyPublic healthResearch

Technology transfer – 1: why is it an issue?

1974 agreement between WIPO and UNRecognition based on role of facilitating technology transfer to developing countries

Trade Related Aspects of Intellectual Property (TRIPS)Article 6: IPRs should contribute to transfer and dissemination of technologyArticle 66; developed countries to promote and encourage technology transfer to least developed countries

The Development AgendaArgentina and Brazil proposals including establishment of standing committee on technology transfer

Technology transfer 2; what is it and how is it done

Sharing of ideas, knowledge, skills, and technology between individuals, institutions, or countriesThe public domainAcquisition of tangible and intangible propertyLicensingTechnology servicesInvestment such as Foreign Direct Investment (FDI)Tacit channels

Technology transfer – 3; policy issues

Role of patent systemTradeLicensingInnovation

InformationProtection

Public versus privateRecipient capacityRegulatory framework