intellectual property, technology, open licensing, law and strategy

Last month I had the pleasure of attending Prof. Lionel Bently‘s talk on patent exclusions and exceptions as part of UCL’s Current Legal Problems Lecture Series.

Some interesting point about the history of patent exclusions and exceptions:

• Naturally there was some large variation internationally prior to TRIPS. A 1988 WIPO survey of the then 97 Paris Convention members revealed some fun exclusions, such as for Cosmetics (Bulgaria and Republic of Korea).
• In addition to TRIPS, the European Patent Convention (EPC), the PCT (through how search is handed in Article 39), and even WIPO’s Model Law 1979 have contributed to some harmonisation on exclusions.
• One interesting point — the Community Patent Convention’s Article 27 contributed to some harmonisation of exceptions (as a sort of model law) even though it was never enacted.

Prof. Bently then went to outline some different rationales for having exclusions and exceptions, and to compare the approach — I do hope he makes his slides available. In any event, this lecture was tied to a study done for WIPO that he was a part of about (what else) patent exclusions and exceptions for the WIPO Standing Committee on Patents: Experts’ Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights – SCP/15/3.

Prof. Bently outlined some interesting conclusions for “international lawmakers and interpreters” from the experiences with the report:

• Facilitate interaction between exclusion/exception provisions. If excludable under TRIPS Article 27 then it should be possible to operate an exception under Article 30.
• There are dangers with interpreting TRIPS Article 30 [the three step test for patents] narrowly. In particular “limited exceptions”. It could impede positive developments.

For me, this leaves open two normative questions of patent exceptions and exclusions:

1. Should we have further harmonisation of exclusions and exceptions for patents within the International IP System?
2. If we should have further harmonisation, who should deal with emerging questions in this area, particularly as they apply to morality, especially in light of changing technology?

I certainly don’t know the answers to either one of these, but I think that they are very interesting questions. Some points to consider:

• TRIPS uses a minimum standards approach and thus sets a floor but not a ceiling for protection. Protection is very much the perspective taken by TRIPS on IP, and this means that the exclusions in TRIPS are optional, for example, and states can protect these areas if they choose.
• Because TRIPS leaves exceptions and exclusions as options, this means that they can be overridden by regional Free Trade Agreements (FTAs).

As a result, should we look at making patent exceptions and exclusions mandatory and not optional? Not sure I know the answer, but if we want true harmonisation, it’s perhaps the optimal approach.