Idea. Asset. Patents. Globally, valuable utilization of Intellectual Assets has been a challenge for the industry professionals to maze through and take critical business decisions. However, harmonization of Patent Law also plays a major role in the whole value chain. Lex Witness brings to you a special 3 months series on the subject with the industry vanguard Pinkai Ghosh, AVP, IP department, Reliance Industries Ltd.
Knowledge plays a centric role in today’s economy. At the core of all intellectual property theory lies the basic observation that information has economic value, both to individuals who possess it and to society as a whole.1 Well before there was a formal legal definition of intellectual property, there were attempts to organize the control of valuable knowledge on behalf of various groups who stood to gain from its exploitation.2 The precursors to patents, such as grants of privilege, letters of patent from the sovereign ruler, conferred certain groups’ advantages in newly emergent technologies. The role of patents today is broader and associated with the strengths and weaknesses of an organization.
In order for an industry to transform itself into knowledge based business, it is essential that the focus on Intellectual Property (IP) shift from the administrative and judicial arenas to the business arena. The effective management of intellectual assets by an organization can give an edge to the organization both in the domestic and international market. The intellectual assets of an organization would include both the Intellectual Property (IP) and the rights granted on these IP’s. IP is viewed broadly as intellectual assets packaged as value propositions for commercial transactions, instead of being narrowly defined as legal rights (Intellectual Property Rights).3 Intellectual Property (IP) includes a range of intangible assets such as patents, trademarks, copyright and trade secrets. The effective management of these intellectual assets requires creativity and innovation with a strategy to remain oneup from the competitor.
A business strategy articulates the direction of the business with sufficient clarity to give a clear framework for decision making.4 These strategies are based on the interests of the organization as a whole and on the individual projects. Different industries use a combination of IPs to protect their assets. This can vary from industry to industry and their strategies. Presently, Information Technology (IT) companies are placing greater reliance on patents to protect their intellectual assets. Patents are granted for innovations and have a stringent examination system in place. It is one of the strong forms of protections providing a twenty-year term from the date of filing of the application. However, patent examination system varies from jurisdiction to jurisdiction as per the substantive law drafted by the legislature of that Government.
Patent law today is a complex institution. Bureaucracies, courts, and legislatures all play a role in shaping complex doctrines and policies.5 Although organizations are beginning to give increased focus on innovations and their protection, one of the main challenges faced by the organizations today are the countries in which patent protection should be applied for. The reasons include cost of applying in multiple countries and the different examination systems of these countries. Current systems do not provide for any provisions for obtaining an international patent. Keeping in mind the current difficulties faced by the applicants, a reform has been proposed in the current PCT system to enable applicants to gain stronger protection by harmonizing the patent system and making it more economical. The aim is to be able to implement the draft PCT roadmap within a timeframe.
Keeping the above introductions in mind a study has been made which can help to trigger detailed research in order to keep IP system more in line with India’s latest mantra “Make in India”. For this this article will be published in 3 parts as mentioned below:
The history of intellectual property reflects the triangulation of three interlinked histories: the legal institutional, technological and political/ideological.6 The guild system in the Middle Ages followed a system of apprenticeship, which facilitated the process of imparting the techniques of the craft. 7Craft guilds recognized the value of their craft knowledge and made considerable efforts to control and limit its availability within the membership of the guild.8 Because in Venice the guilds were powerless to grant or allow monopolies by action of their own, the rules were state-issued, making them the forerunners of modern patents.9 Though the guilds never called it intellectual property, their efforts to assert their rights over their craft knowledge and practices reflected the recognition of the value of knowledge.
Prior to the national legal formalization of intellectual property laws, patents typically took the form of grants of privilege by the particular sovereign into whose territory such practices were being introduced. These grant of privileges, patents and other forms were different ways and means of the rulers to bring the technologies within their national economies.
The first known patent statute was passed in 1474 by the Venetian Republic. The notions soon spread to other parts of Europe. Literae Patentesor Letters Patent were issued by the sovereign grace to proclaim a special privilege, title or monopoly.10 In England letters patent system was abused and was used by the Crown to control trade. The abuse became so flagrant that in 1623 Parliament passed the Statute of Monopolies11, which declared all monopolies void except those granted for new and useful devices.12 The US in its turn has led the push for the global approach.13
Today, national patent offices administer the patent system and are affiliated with the ministry charged with the responsibility of administering the patent system and promoting its use. This varies from country to country. Although patent laws had been enacted in several countries, the demand for international protection of inventions began to be felt in the 19th century. Globalization made Intellectual Property a major issue. Foreign exhibitors refused to attend the International Exhibition of Inventions in Vienna in 1873 because they were afraid their ideas would be stolen and exploited commercially in other countries. A number of European countries had domestic patent systems, and representatives met in Vienna in 1873 to discuss prospects for an international agreement to protect patents building on this temporary arrangement.14 This incident resulted in the birth of the Paris Convention for the Protection of Industrial Property in 1883, the first major international treaty designed to help the people of one country obtain protection in other countries for their intellectual creations.15
Paris Convention has led to the development of a few more International Systems governing the patent system in part between the Governments of the contracting parties. These include the Strasbourg Agreement (governing the international patent classification), Patent Co-operation Treaty (PCT) governing an international system providing the applicants an opportunity of obtaining an international search report, an optional examination report and a thirty-one months (in some countries thirty months) period to enter the national phase. TRIPS (Trade Related Aspects of Intellectual Property Rights) governed by WTO (World Trade Organization) mandates all member states to implement minimum standards provided for in the Agreement (Article 27- Article 38 of Part II).
A patent is a territorial right granted to an applicant (corporate/institute/natural person) by the Sovereign in return of full disclosure of the invention to the public. The rights granted by the Sovereign are enforceable within the territory itself. Therefore such rights constitute territorial rights. To be able to take advantage or rather to monopolise an invention, an applicant is likely to selectively file in countries where he thinks his invention should be protected so as to commercialize it. The independent, national systems are composed of legislative enactments, judicial interpretations, administrative practices, and governmental policies. Probably no two systems are exactly alike16. At present, there is no unified international patent system. The term international patent system refers to a philosophical or cultural institution which acts like a central system of intergovernmental members to setup standards which the national systems are obliged to follow towards each other. The literal minded will find no uniform, organized international legal system covering patents in either domestic or international trade. Yet, a system does exist in the sense that the various national systems combine into an economic pattern.17
On a proposal presented by the Delegation of the United States of America, the Executive Committee of the International (Paris) Union for the Protection of Industrial Property adopted, on September 29, 1966, began the consultations
leading up to the adoption of the PCT.18 The PCT was specifically designed to act as a mechanism for the mutual exploitation of the work product of other offices thereby reducing the overall work load of patent offices. The PCT system has been extremely popular with applicants and achieved great success in bringing together formal and procedural requirements of States.. However the PCT system has not achieved its objective to its fullest extent.19
Projects such as the Patent Prosecution Highway (PPH) initiated by a few national offices such as USPTO, EPO, JPO and Korea are efforts by these national offices to reduce the burden of the patent offices and bring about some harmonization in grant of a patent in countries other than the home countries. However, PPH can never be an effective international solution on their own because they rely on the initial work being done by an examining Office, discriminating against applicants from States with non examining Offices.
International patent protection is outside the reach of individual inventors and small and medium-sized enterprises even from rich countries, let alone those from developing and least-developing countries. A backing in the form of research collaborations, from venture capitalists and large corporations has become one of the means to sustain the research and commercialize the same. There are proposals to bring about reforms in the current PCT system with a view to bring in a unified patent examination and grant system across the member countries. The PCT Working Group (WG) and the International Authorities of the PCT have met several times to discuss the feasibility and issues to include reforms in the current PCT system.
At its thirty-sixth session, the PCT Assembly established a Working Group to do preparatory work for matters which require submission to the Assembly. Most commonly, this involves proposals for amendment of the Regulations under the PCT. The working group had its first session in Geneva from May 26 to May 30, 2008. The second session of the working group again held at Geneva from May 4 to May 8, 2009 discussed the issues and proposals of the PCT reforms roadmap.
The sixteenth session of the Meeting of International Authorities (MIA) held from March 16 to March 19, 2009 at Seoul discussed the future map of PCT. This session identified the roadmaps to implement changes in the PCT system with the goal of harmonizing the patent system. Issues were recognized keeping in mind the current difficulties presently facing the applicants, national offices and third parties (opponents, alleged infringers). Governments, Offices, innovators, intellectual property professionals and public interest bodies were invited to express their views on the roadmap and discuss the issues presented below:
National Offices in both their national and international roles need to22;
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