Overview of recent trends in patent regimes in - PRO INNO Europe

drawerbeamerBiotechnology

Dec 6, 2012 (4 years and 9 months ago)

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1

Overview of recent trends in patent regimes
in United States, Japan and Europe


Catalina Mart
í
nez, OECD

European Trend Chart on Innovation

Luxembourg, 3
-
4 June 2003


2

USPTO grants, JPO and EPO applications, 1980
-
2002


Note
:

USPTO

grants

sorted

by

grant

year

(
1980
-
2002
)
;

EPO

applications

(including

PCT)

sorted

by

application

year

(
1980
-
2001
),

only

partial

information

available

for

2002
.

JPO

applications

by

application

year

(
1981
-
1998
)
.

Source:

OECD patent database
.


0
20,000
40,000
60,000
80,000
100,000
120,000
140,000
160,000
180,000
1980
1982
1984
1986
1988
1990
1992
1994
1996
1998
2000
2002
0
50,000
100,000
150,000
200,000
250,000
300,000
350,000
400,000
450,000
500,000
USPTO grants (left axis)
EPO applications (left axis)
JPO applications (right axis)
3

What
has determined

this increase in patenting ?


The primary reason is probably a surge in the
number of inventions connected
to
the surge in R&D
expenditure…



… but

nearly half of the growth in patenting over
the 1990s is unaccounted for by R&D
expenditure
. There is room for other explaining
factors such as changes in market structure,
strategic
patenting,
emergence of new technologies… and
changes in patent legal regimes.

4

Changing patent regimes



Greater recognition that intellectual
property drives innovation and growth.



Emergence of new governing bodies.



International upward harmonisation.

5

Pro
-
patent
view

in the United States



“the growth in patent applications is a boon for
America's economy, as well as contributing to
our genius for innovation.”




(JAMES E. ROGAN, Director of USPTO, Hearings on
Competition and Intellectual Property Law and Policy

in the Knowledge
-
Based Economy, February 6, 2002



6

Pro
-
patent
view

in Japan

“The government and industry must therefore
consider intellectual property to be the source
of industrial competitiveness and establish an
intellectual property based strategy
immediately.”


(METI, Task Force on Industrial Competitiveness and
Intellectual Property Policy, 2002)


2002, Creation of the

Strategic Council on Intellectual
Property

(Prime Minister’s Cabinet) with the aim
“to
establish a national strategy for intellectual property
and to powerfully advance the necessary policies”



7

Pro
-
patent
view

in Europe


A Community patent

“is considered to be an
essential tool if we are to succeed in
transforming research results and the new
technological and scientific know
-
how into
industrial and commercial success stories
.




(European Commission, COM 2000, 412 Final, p.6)


March 2003, common political approach reached.


8

New IP governing bodies


WTO
,
TRIP
S

(1995)
,
upward harmonisation of patent law,
minimum standards of IP protection and enforcement.



WIPO
, PCT system and IPR harmonization treaties (PLT, 2000
and SPLT, ongoing negotiations).



US
Court of Appeals for the Federal Circuit
(CAFC, 1982)

Patents upheld on appeal increased from 62% during 1953
-
1978 to
90% in the period 1982
-
1990
.



EPO

(1978
), examination and opposition procedures.



Japanese s
pecialised courts
:
IP divisions in general courts
(1996)

and
concentration of IP proceedings in two courts (1998)
.

9


Recent changes in patent regimes


New areas of patentability: biotechnology, software
and business methods.



Broader scope of protection, especially in new areas.



More flexible and less costly administrative patenting
procedures, especially for international applications.



Increasing number of patents for publicly funded
inventions.



More stringent conditions for research exemptions?

10

Expansion of subject matter to biotechnology



Mere discoveries are not patentable, whereas biological
material isolated or altered from its natural form with a
substantial and specific utility is patentable.



Gene sequences: Tentative conclusions, patents still to be
tested in

courts
.



11

Biotechnological patents
-

timeline


1980 US,
Diamond v Chakrabarty
: human
-
made micro
-
organisms
.



1988 US, Harvard University:
O
nco
M
ouse
.



1998 EC Biotechnology Directive.



1992 EPO
, OncoMouse.



2001 USPTO revised guidelines for determining the utility of gene
-
related inventions
.



2001
Trilateral studies and restrictions on patenting genes
.



2002 Canadian Supreme Court invalidates patent for OncoMouse.


12

Biotechnology patents at USPTO and EPO,
priority years 1980
-
1998


0
1,000
2,000
3,000
4,000
5,000
6,000
1980
1982
1984
1986
1988
1990
1992
1994
1996
1998
EPO
USPTO
Source:

OECD patent database, May 2003.


13

Expansion of subject matter to software




Software is patentable in the US and Japan with
almost
no restriction

& although
software
‘as such’

is
in
principle
not patentable

in Europe…it is patented
under certain conditions.



14

Software patents
-

Timeline


1981 US,
Diamond v Diehr:

software producing a useful effect, embedded in
a machine
.



1993 JPO guidelines, patentability of inventions expressed as an algorithm

-

emphasis on patentability requirements
.



1994 US,
Re Alappat
: software producing ‘a useful, concrete, and tangible
result’ in general purpose computers
.



1994 EPO Board of Appeals, IBM software as solution of a technical
problem.



1995

USPTO examination guidelines: emphasis on novelty and utility

-

regardless of the presence of an algorithm
.



1998 EPO Board of Appeals, IBM software producing a technical effect
beyond the ‘normal’ physical interactions with the computer.



2002, EU Directive Proposal: technical contribution
.


15

Expansion of

subject matter to business methods




Business methods are patentable in the US with no
restriction

&
to a large extent in Japan (if the
invention has some

technical content

)
.

Not

patentable in Europ
e.



16

Business Methods Patents
-

Timeline


1982 US,
Merryl Lynch v Paine Weber

(Federal Court)
.



1998 US,
State Street Bank

case (CAFC)
, ‘useful, concrete and
tangible’ result.



1995 EPO Board of Appeals,
Soler
(general purpose management) /
Petterson
(queuing system): computer
-
implemented BM constituting a
sufficient technical problem
.



1999 US First inventor defense



2000 JPO revised examination guidelines: emphasis on novelty and
inventive step
.



2001 USPTO White Paper on BM: concern about quality
.



2002, EU Directive Proposal: explicitly excludes inventions where
inventive step relates to ‘business’ only, not technical
.


17

Business method patents at USPTO and EPO, grant
years 1980
-
2002


0
200
400
600
800
1,000
1,200
1980
1982
1984
1986
1988
1990
1992
1994
1996
1998
2000
2002
USPTO grants
USPTO grants also applied at EPO
USPTO grants also applied and granted at EPO
Note: Business method patents defined as those classified in USPC 705. Data on
recent
EPO grants is still partial. Patents are sorted by grant rate.

Source:

OECD patent database, May 2003.

18

Broader
s
cope of protection


D
octrine of equivalents:


Increased likelihood of infringement: an

invention that performs the
same function and obtains the same result as a patented invention
would be judged to infringe.


Possible limitation
: Festo case, absolute bar to use equivalents to
narrowed claims during the application process in infringement
litigation (CAFC 2000) / no absolute bar, patentee bears the burden
of the proof (US Supreme Court 2002)


N
umber of claims:

1988 Japan abandoned its single
-
independent claim system

Possible limitation
:
USPTO and EPO impose extra fees for number of
claims above a threshold (intended to compensate PTO handling
cost)
.


19

Broad claims in new areas:


“Reach
-
trough claims” in biotechnology:

claims to future
inventions based on currently disclosed inventions (concern
raised in 2001
T
rilateral study)
.



“Per se claims” in biotechnology:

conferring absolute
protection to the product per se, regardless of its use known or
unknown at the time of the application (e.g. genes)



as for any
other chemical compound.



“Function claims” in software and BM:

claiming problems
rather than solutions, any solution developed for that problem
would infringe the patent


lack of experience of examiners?


20

Proportion of grants in USPTO and EPO among patent
applications with USPTO priority also applied at EPO,
1982
-
1998

Note: Grant rate is defined as number of grants divided by number of applications sorted
by application dates. Data on recent EPO grants is still partial.

Source:

OECD patent database, May 2003.


0%
10%
20%
30%
40%
50%
60%
70%
80%
90%
100%
1982
1983
1984
1985
1986
1987
1988
1989
1990
1991
1992
1993
1994
1995
1996
1997
1998
EPO grant rate (USPTO+EPO applications)
USPTO grant rate (USPTO + EPO applications)
21

Flexibility of patenting procedures: an ‘option to patent’



Filing:


PCT entry into the national phase extension from 20 to 30
months in April 2002

/ Automatic designation of all PCT
countries for a single fee as of January 2004.


USPTO provisional patent applications since 1995
.


USPTO continuation and continuation in part applications
.


EPO patents since 1978 / Common political approach on
Community Patent in March 2003.



Examination:


JPO period to request examination 3 years from application

(
7

years until 2001).



EPO request for examination no later than 6 months after

publication of search.


US 2002 alternative
‘multi
-
track examination process’.

22

Decreasing administrative costs


JPO, USPTO and EPO Application Fees in USD, 1996 prices


0
500
1,000
1,500
2,000
2,500
3,000
3,500
4,000
1983
1985
1987
1989
1991
1993
1995
1997
1999
2001
JPO
USPTO, large entities
EPO (8 states + search)
Note:

EPO standard application costs include designation fees for 8 states and
search fees, in addition to filing fees. USPTO and JPO comprise filing fees only.

Source:

JPO, USPTO and EPO.


23

Loss of rights


Research exemptions


Important restriction in the
US
with the
CAFC decision

on

Madey v Duke
University (Oct.2002)
-

US Supreme Court ?


No exemption for research, except if conducted for
idle
curiosity or
strictly
philosophical
inquiry.


No exemption for commercial research: Universities are in the
business of providing education and research?



Experimental use for generic drugs testing

1984 US exemption for regulatory approval testing.

1999 Japanese Supreme Court exemption for generic pharmaceuticals

Differences across countries in Europe


most liberal situation in
Germany.



Compulsory licenses

Rarely applied: Competition law, Public Interest, Public Health, National
and Energy Security.

Bayh
-
Dole Act ‘march in’ rights never exercised.

24

Patents for publicly funded inventions



1980

US Bayh
-
Dole Act
.



N
early all OECD countries have followed suit
implementing reforms to
encourag
e

PROs to
patent and license
inventions resulting from public
research.



Ownership by the institution, creation and support
to technology licensing offices.



International survey: OECD (2003), “Turning
science into business”.


25

Park’s i
ndex

of patent strength

(extent of coverage, international agreements, loss of rights,
enforcement, duration)


0.0
0.5
1.0
1.5
2.0
2.5
3.0
3.5
4.0
4.5
5.0
1960
1965
1970
1975
1980
1985
1990
1995
2000
EU
Japan
United States
OECD
Note:
OECD and EU weighted average of country values of the index using GDP 2000 PPP$.

Source:
OECD, based on data from Ginarte and Park (1997), Park (2001, 2002).


26

Conclusions

Since the 1980s, most changes in patent regimes
have gone in the direction of ‘strengthening
patent rights’.


A direct effect of these changes has been a rapid
growth in patenting activity, which has coincided
with a wave of innovation, notably in emerging
areas. It is still debated to what extent changes in
patent regimes are a determinant or an effect of
this new course in innovation.