Prior-art related issues: definition of prior art, novelty and inventive step

1. Prior-art related issues: definition of prior art, novelty and inventive step OPEN FORUM ON THE DRAFT SUBSTANTIVE PATENT LAW TREATY (SPLT) Geneva, March 1 to 3, 2006 Carlos M. Correa

2. Prior art in the draft SPLT • The prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form[, as prescribed in the Regulations,] before the priority date of the claimed invention (article 8(1).

3. Relative or absolute novelty? • Foreign non-written disclosures (e.g. 35 U.S.C section 102 (a)) • In the TRIPS Agreement there is ‘no prescription as to how WTO Members define what inventions are to be considered “new” within their domestic systems’ [IP/Q3/USA/1, May 1, 1998]

4. Novelty: other problematic issues • Secret prior commercial use • Expressis verbis v. implicit teaching • Selection patents

5. Inventive step in the draft SPLT • A person skilled in the art means a hypothetical person with general knowledge and ordinary skill in the relevant field of the art at the relevant date (Rule 2).

6. Defining a person having ordinary skill in the art (PHOSITA) • Ordinary knowledge or expert knowledge?

7. How much skilled PHOSITA is? US practice • The courts have endowed the PHOSITA with mediocre personality traits; she is conceived of as an entity that adopts conventional approaches to problem solving, and is not inclined to innovate, either via exceptional insight or painstaking labor (Burk and Lemley, 2002)

8. Is PHOSITA the same for all inventions? US practice • Courts treat differently non-obviousness in biotechnological (low standard) and software (high standard) inventions (Burk and Lemley, 2002)

9. Differences within national systems: US example • Less than 30% of patents were found valid by courts before CAFC (Jaffe and Lerner, 2004, 105) • CAFC reversed 10% of cases that initially found the patent to be valid and 51% of cases where the patent was initially found to be invalid (1982-1989)(Cooley, 1989)

10. Is PHOSITA in risk of extinction? • Growing role of secondary factors (commercial success, failure of others, long felt need) • Non-obvious as equivalent to novel

11. In the opinion of the US Federal Trade Commission … “It does not seem sensible to treat an issued patent as though it had met some higher standard of patentability” (FTC, 2003, 10)

12. Harmonize, on the basis of which standard? • A new device, to be patentable, “must reveal the flash of creative genius” (Justice Douglas in Cuno Engineering Corp., 314 U.S. 84, 51 U.S.P.Q. 1, 1941) • The only valid patents are those the Court has not been able to get its hands on (Justice Jackson Junguersen v. Ostby & Barton Co., 335 U.S. 560, 80 U.S.P.Q. 32 (1949)dissenting opinion) OR

13. Method of putting golfer’s hand US Patent 5,616,989 A method of putting features the golfer’s dominant hand so that the golfer can improve control over putting speed and direction. The golfer’s non-dominant hand stabilizes the dominant hand and the orientation of the putter blade, but does not otherwise substantially interfere with the putting stroke. In particular, a right-handed golfer grips the putter grip with their right handing a conventional manner so that the thumb on the right hand is placed straight down the top surface of the putter grip. The golfer addresses the ball as if to stroke the putter using only the right hand…

14. On-line price comparison of competitor’s goods and/or services over a computer network • US Patent 6,076,070 • A method for a computer-implemented on-line comparison over a computer network of goods and/or services sold by a vendor comprising the steps of: • Requesting through said computer network from a competitor’s database a price for an item; • Displaying said competitor’s price on a display • Decreasing the price of said item sold by the vendor by a predetermined amount to create a new price if said competitor’s price is less than said item price; and • Displaying said new price on said display….

15. Mouth Appliance for Assisting in Weight Control Patent Number: 4,883,072 Date of Patent. Nov. 28, 1989 Inventor: Edward W. Bessler, Fort Mitchell, KY

16. Animal Hat Apparatus and Metbod Patent Number: 4,969,317 Date of Patent: Nov. 13, 1990 Inventor: April Ode, Lake Havasu City, AZ

17. Increase in patenting • If this increase in patenting reflected an explosion of US inventiveness, it would be cause for celebration. But unfortunately it is clear that the rapid increase in the rate of patenting has been accompanied by a proliferation of of patent awards of dubious merit…(Jaffe and Lerner, 2004,6)

18. Low standards of patentability … • create an overload in patent offices • promote evergreening • increases litigation • permit agressive use (abuse) of dubiuos patents against weaker competitors • negatively affect social policies (e.g. access to medicines)

19. The inventive step should be applied in a manner that… • raises R&D in industries that innovate rapidly and in risky projects (Hunt, 38; Merges (88, 92)) • reduces offices’ work overload, improves patent quality • rewards genuine contributions (utility models for minor innovations)

20. The role of patent offices Patent offices have become extremely pro-patent since the early 1980s…the applicant, formerly considered with suspicion, has become a ‘client’, whose needs must be satisfied by quick, cheap procedures. The result is a total deterioration of examination procedures…(Foray, 2004,450)

21. Objectives of WIPO’s patent agenda • Facilitate international patenting • Reduce overload of patent offices • Reduce costs for applicants and time of procedures

22. If frivolous applications were normally denied… • The number of applications will be dramatically reduced • The time allocated by examiners would increase • Litigation costs and patent abuses will diminish

23. Is substantive harmonization the best way to achieve the Agenda’s objectives? • Differences within and between countries will remain • WIPO’s Agenda does not address the crucial problems

24. Is substantive harmonization desirable? • Smaller room for the design of innovation policy and adaptation to levels of development • Risk of universalization of mediocre PHOSITA and patent proliferation • Less global competition and innovation

25. An alternative patent agenda should… • Discourage patent proliferation • Improve patent quality and protect the public domain • Encourage States to differentiate according to their innovation systems • Ensure the patent system serves the public interest and promotes development

26. REFERENCES • Coolley, Ronald B. 1989. "What the Federal Circuit Has Done and How Often: Statistical Study of the CAFC Patent Decisions - 1982 to 1988." Journal of the Patent and Trademarks Office Society. Vol. 71: 385-98. • Federal Trade Commission (FTC) (2003), To promote innovation: the proper balance of competition and patent law policy, htpp://www.ftc.gov • Foray, Dominique. 2004. « The patent system and the dynamics of innovation in Europe », Science and Public Policy. Vol. 3, No. 6: 449-456. • Robert M. Hunt. 1999. NONOBVIOUSNESS AND THE INCENTIVE TO INNOVATE: AN ECONOMIC ANALYSIS OF INTELLECTUAL PROPERTY REFORM. Federal Reserve Bank of Philadelphia • Jaffe, Adam B. and Lerner, Josh (2004), Innovation and Its Discontents : How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It, Princeton University Press. • Merges, Robert P. 1992. "Uncertainty and the Standard of Patentability." High Technology Law Journal. Vol. 7: 1-70._____. 1988. "Commercial Success and Patent Standards: Economic Perspectives on Innovation."California Law Review. Vol. 76: 805-76.