Transcript Slide 1

10th Annual Niro Lecture:
Society, Social Contract and the
Patent Office
Professor Peter Drahos
Centre for Governance of Knowledge and
Development
The Australian National University, Canberra
DePaul Center, Chicago
15 March 2007
Current governance of the
European patent system
governance
European patent
system
EPO
insider governance
Big business users
Patent
Attorneys
Separation of powers approach
to governance
Transparency
balance
Target
concentrations
of power
European patent system
Transparency
registers
External audit
process
Traditional models of governance
State
Law
Food safety
Pharmaceuticals
Aviation
etc
Modern networked
governance model
Public or
private actor
State
Public or
private actor
Public or
private actor
Public or
private actor
Public or
private actor
Public or
private actor
WTO’s Agreement on
Trade-Related Aspects of
Intellectual Property (TRIPS)
United States
multinationals with
large IP portfolios
European
multinationals
with large IP
portfolios
Japanese
multinationals
with large IP
portfolios
USTR
World Trade Organization
TRIPS
Doha Declaration on TRIPS
and Public Health
NGOs eg
MSF
Oxfam
Public health
advocates
Developing
country
governments
Developed
country
governments
Civil society
activists
A transparency balance:
existing model
filtering effect
PO acts as a secretariat
for Review/Inquiry
Big users, patent attorneys
Advisory Committee
PO staff
Patent Office
Policy
Committees
A transparency balance:
membership and appointment to
committees transparent
Open source
Scientists
Users of patented
technologies
Big users, patent attorneys
Advisory Committee
PO staff
Policy
Committees
Patent Office
Patent quality:
an external audit check
litigation
opposition
Scientists
Companies
Software
organizations
Granted
patents
(100%)
EP
EPAC
Health NGOs
EPO
internal audit process
‘even experts have trouble making
accurate searches’
Patent
granted
Generic drug company
enters patent system here
Transparency Registers
Island of
certainty
Patent
granted
Generic drug company
enters patent system here
Concentrations of power that
compromise patent quality
Patent Office
Senior
Managers
Output targets
Patent
attorneys
Examiners
Large numbers of
applications
A separation of powers approach would increase the
independence of examiners consistent with the goal of
improving quality
Greenpeace:
Patents on Life Campaign
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Launched in 2001, the Patents on Life Campaign monitors patents on life; broad species
patents; biopiracy; fair trade; patents; and the World Trade Organization and human
patenting.
In August 2005 Greenpeace revealed Monsanto’s application for global pig patent
‘Filed at the World Intellectual Property Organization (WIPO) in Geneva (2) the patent
application staked a claim on pig rights in more than 160 countries, including the UK,
Germany, the US, Russia, Brazil, Australia, China and India. If granted, US-based Monsanto
will be in a position to prevent breeders and farmers from breeding pigs with certain
characteristics or methods of breeding, or force them to pay royalties. The patents cover
methods of conventional breeding and also the screening for naturally occurring genetic
conditions that can make pigs grow faster.’
Further information:
http://www.greenpeace.org/international/press/reports/greenpeace-patents-on-life-in
Electronic Frontier Foundation
(EFF):
Patent Busting Project

Patent Busting Project is intended to take on illegitimate patents that suppress noncommercial and small business innovation or limit free expression online.

The Project has two components:
A. Documenting the Damage by:
(1) Identifying the worst offending patents;
(2) Documenting the prior art that shows their invalidity; and
(3) Chronicling the negative impact they have had on online publishers and
innovators.
B. Challenging the patents:
Once it has identified some of the worst offenders, EFF will begin filing challenges to
each in the form of a “re-examination request” to the USPTO. These requests create a
forum to affirmatively invalidate patents rather than forcing technology users to await
the threat of suit. Under this procedure, EFF can choose particularly egregious patents,
submit the prior art it has collected, and argue that the patent should be revoked. EFF
will collaborate with members of the software and Internet communities as well as legal
clinics and pro bono cooperating attorneys to help in these efforts.
Further information: http://www.eff.org/patent/
Alternative Law Forum (ALF):
The Mailbox Project
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Following India’s membership to the WTO (and TRIPS) in 1995, India was required to open a
‘mailbox’ which would allow companies to deposit applications for patents covering
pharmaceutical products. However, the mailbox remained ‘closed’ until the recent enactment of
the Patents (Amendment) Act 2005.
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Under the new Act, the Patent Office was required to publish the applications deposited in the
‘mailbox’ so as to provide some transparency to the general public, but more importantly to allow
any interested parties to be able to identify relevant applications for pre-grant and post grant
oppositions.
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The Mailbox Project makes the existing information in patent applications more user friendly and
complete in terms of a searchable database. ALF add information such as the nature of the
disease, drug type, the chemical entity(ies) that each application relates to and the related priority
document for the Indian application.

The database has the ability to:
• search for drugs applied for in the ‘mailbox’
• identify the disease to which the invention claimed in the patent application relates
• identify the applicant/company for the patent
• link the searcher to the priority application (where claimed) or a related patent
Further information: http://www.altlawforum.org/MAIL%20BOX
Public Patent Foundation (PubPat)
Representing the public’s interests
in the patent system

PubPat is a not-for-profit legal services organization that represents the public's interests against
the harms caused by the patent system, particularly the harms caused by undeserved patents
and unsound patent policy. PUBPAT provides the general public and specific persons or entities
otherwise deprived of access to the system governing patents with representation, education and
advocacy.
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PUBPAT accomplishes its mission through the following activities:
• Protecting the public domain
• Educating and advocating
•
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Activities include Software Patent Watch
Activities include Software Patent Watch, PubPat in Congress, PubPat in Supreme Court, PubPat
in the Federal Circuit and free instructions on how to find prior art.
Further information: http://www.pubpat.org/
International Center for
Technology Assessment (CTA):
Patent Watch Program
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CTA's Patent Watch Program seeks to identify pernicious patents granted by the USPTO, encourage
grassroots activities against such patents, and initiate and support legal challenges against existing and
future pernicious patents.
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As a result of the program, CTA has been involved in the following legal action:
Withdrawal of U.S. Patent No. US-6,444,872-B1 05/24/2004
The University of Texas withdraws its patent on a beagle whose immune system was
compromised to facilitate the dog's use in medical experiments.
Inter Partes Reexamination Communication - U.S. Patent No. US-6,444,872-B1 05/19/2004
The U.S. Patent and Trademark Office grants CTA's request that the PTO reexamine the
University of Texas' patent on a beagle whose immune system was compromised to
facilitate the dog's use in medical experiments.
USPTO Reexamination Request - U.S. Patent No. US-6,444,872-B1 02/25/2004
The Patent Watch Program and the American Anti-Vivisection Society file a legal "Request for
Reexamination" with the federal Patent and Trademark Office. The action demands that the
Office cancel a patent granted to University of Texas researchers on a beagle whose
immune system was compromised to facilitate the dog's use in medical experiments.
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CTA also issues policy recommendations and publications based on the Patent Watch Project.
Further information: http://www.icta.org/patent/index.cfm
Patent applications in the
Vietnamese Patent Office
ACCEPTS
PATENT
APPLICATION
VPO
VPO
ACCEPTS
EPO
ACCEPTS
REJECTS
VPO looks at
US PTO
VPO
MAY ACCEPT
US PTO decision
REJECTS
VPO REJECTS
Professor Peter Drahos, Director
Centre for Governance of Knowledge and Development
Regulatory Institutions Network (RegNet)
The Australian National University, Canberra
[email protected]
cgkd.anu.edu.au