Emerging and potential new uses for IP information

This chapter considers emerging and potential new uses of IP information for National Patent Offices, their customers and other stakeholders. We consider that these customers and stakeholders comprise both internal (examiners) and external, which includes the public and not only innovators and implementers of technology.  In the increasingly globalised world of trade, we also recognise that innovation systems must produce technologies deliverable to markets outside the country of origin.

In the context of the worldwide trend for patent transparency, it is now possible to conceive of wise use of search trends to put countries providing excellent patent search facilities in a leadership position rather than in catch-up mode.  It is also possible to use this total transparency to allow the leverage of many rights into industry, environment and social prosperity.

Searching of IP information for trade leverage

The last twenty years has seen an unprecedented increase in worldwide patenting.  Article 7 of the international treaty on Trade Related aspects of Intellectual Property rights (TRIPs) states “the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.”  Increased compliance with TRIPs is seeing many national patent systems inundated with patent filings from major overseas corporations. This is causing new barriers but also new opportunities including:

  • Timely trade access to new primary industry products,
  • Advanced technology development, and
  • Services in key markets.

IP barriers may be as significant, or more, than tariffs and other trade barriers in affecting market pull.  Though a national entity may develop and own a technology, injunctions can force cessation of production and sales.  Imports may also be stopped or delayed in countries where blocking patents are in force, even if such patents are vulnerable to later legal challenge.

Thus, we see a necessary extension of IP informatics and search considerations to emerging economies and their markets of interest.

It is in the interest of all national governments to consider how intellectual property information could be leveraged for the continuing industrial, cultural and financial development of export markets. Searchable and timely information on technology being constrained in overseas patents is important to a very wide community of national patent office stakeholders.

Stakeholders interested in improved search technology

We consider stakeholders with invested interests in improved search technology to be:

Commercialisation and Production Industries:

  • Are interested in technologies in terms of: commissioning, delivering and uptake of products; ownership patterns; and attendant rights to practice. These are major considerations when planning acquisitions, partnering, marketing and other decisions with wide economic implications.

Financial Community and Public Good Funders:

  • Aim to make wise investments in research and development.  Investment decisions are based on the commercial deliverability of innovations.  This requires continual updating of information on opportunities and barriers in existing technology and target markets.

Inventors, Examiners and Legal Professionals:

    • Are interested in saving money by not developing and prosecuting technology that has been invented elsewhere.

All of these stakeholder groups require access to updated and integrated IP information.

Utilising IP information for Trade Leverage

A number of  key markets are emerging economies with recently developed IP systems. Effective public access to IP information emerging within these systems has become necessary to foster local innovation and economic growth. Clearly, researchers, business people and stakeholders in the innovation process need to find, combine and utilize IP information from both domestic and foreign jurisdictions. This is key to making good decisions about technologies, potential markets, and partners.

Therefore, IP offices must consider new solutions to search and retrieval technology. Improved access to IP information is not only vital to innovation, but also urgent.  Therefore, both long-term investment and rapidly placed interim solutions will significantly improve strategic use of IP information. It will be important to start with the right technology, that is flexible enough to expand while long term solutions are set in place.

At a minimum, innovation stakeholders need:

  • Basic functionality such as full text searching of patents, including claims and specifications.  Title and abstract searches miss too much.
  • Effective parallel access to IP data from other countries, for example from key markets, to ensure that research and innovation can be commercialised.

Searching IP information to foster technology development

There is significant potential in the patent system for strategic and legal use of technology that has been described but is not subject to valid claims in a particular jurisdiction. This is because the intent of an enabling description is to provide information on the technology so that it can be used outside the monopoly grant and readily improved.

The cost of developing technology de novo  or extending use of technology could be minimised by uncovering enabling descriptions of technology and shedding light on where this technology can be freely used.

CAMBIA’s focus has been the development of IP information as a reservoir for understanding constraints related to existing technology. In doing so we find open opportunities for development or improvement.  Our opinion and experience is that this is highly successful, a view shared by the EPO:
“Because of a lack of information, existing inventions are re-invented, problems that have already be solved are solved again, and products that already are on the market are re-developed. Duplication of efforts in this way costs European industry US $ 20 000 000 000 every year – simply because of the lack of information… 80% of technical information is published in patent documentation – and often nowhere else. “

Key jurisdictions with growing innovation systems are focusing on developing, using and enforcing their patent systems.  For example, China and Korea are prolific innovators in a number of areas and India and Brazil are leading the way for software and drug production processes.  The availability of IP databases from multiple jurisdictions, searchable simultaneously, would create major opportunities for technology discovery.   Making IP databases more accessible and interlinked is essential to achieving this.

Availability to patent status information fosters technology development

The opportunity for technology discovery increases if patent status information (e.g. INPADOC) is incorporated into patent information. Status information from the USPTO and other mature patenting systems is currently available via their patent offices. However, this is not in a friendly interface that allows comparison with other jurisdictions.

With status information users can readily locate information in the jurisdiction(s) of interest. Also, an interesting technology may not be patented in particular jurisdictions due to exhaustion of patenting rights. Leads obtained through patent status information can then be verified and further developed to allow the leverage of technologies, into local industry, environment and social prosperity.

Searching IP information to place markets in a leadership position

In the context of the worldwide trend for patent reform, it is now possible to conceive that wise use of search informatics would put nations in a leadership position rather than catch-up mode.  This would lead to increased transparency and integration.

The cost and time involved in obtaining data lengthens the patent drafting process and the examination process.  However, unless data searches actually uncover the “prior art” relevant to validity, they do not contribute to increased rigor of patent grants.  Instead, they contribute to opportunity costs in innovation where investment has been misdirected into technology that already exists elsewhere.

Patent grants unrelated to deliverability, furthermore, increase rather than decrease the fear, uncertainty and doubt (FUD, a technical term used in the software industry) which is a disincentive to investors and innovators.

Better data-handling will support obligations under TRIPS and other agreements. It is also supportive of the public good to examine the innovation system and find where incentives are occurring and by what behavior.

The concept of a monopoly grant is, with varying emphasis in different jurisdictions, an economic exchange.  It is an incentive for enabling disclosure of inventions in the arts that is useful to the public.  Monopoly grants also bring leverage to capital recruited into the downstream portions of the innovation chain.

Importance of accessible IP information when processing patents

Discovery of invalidating prior art should be made before a patent is granted.  Failure to do so blows investor confidence and is negative to the economy.  In processing patents National Patent Offices should conduct highly effective prior art searches of:

  • National and international patent data,
  • Non-patent literature, and
  • Traditional knowledge.

Conducting effective searches would ensure that all prior art invalidating claims of patent applications are found. Commitment to the rigour of the patent grants ensures patent monopolies are granted for truly novel and inventive work and not for obvious innovation in relation to prior art.

Developing and encouraging IP information commenting processes will harness the ability of the wider public to uncover prior art that may have been missed by the patent office.  Also, increasing accessibility to patent documents and decreasing the cost of obtaining them will validate rigour that went into the allowance of past patents.

Advice for National Patent Offices

Service to patent offices in this section requires discussion of revenue implications.  National Patent Offices may consider that filing fees may be raised to cover increased search costs in order to gain such increased respect.   The following recommendations offer concomitant opportunities to increase respect for the patent system in ways that may have a smaller effect on patent examination costs, or to mitigate effects on revenue streams while supporting the domestic economy in a wide-ranging way.

Recommendations

  1. Support other means of disclosure for innovations Provide and support other means of disclosure for innovations, by disseminating awareness of incentives to innovation that may be less costly, in both real and opportunity cost and time, different from the process of obtaining a monopoly grant.
  2. Adopt “open source” practices In software development, “open source” alternatives have been used to generate largely pre-competitive innovations in a “protected commons”.  This has resulted in thousands of projects with over a million contributors worldwide. These projects are bringing billions of dollars to small, medium and large enterprise. An “open source” model can be followed in other industries. Patent applications are still being filed in this area for truly inventive technologies for which the applicant desires a competitive advantage.  However, the known alternative of the open source protected commons has allowed many innovations to come to light that might not have been disclosed in patent applications. Examples include innovations too small to justify the cost of patenting, still comprising useful adjustments in implementation or a productive basis for improvement. Some of the most active inventors in this area are scattered worldwide rather than concentrated in the Trilateral jurisdictions where most of the world’s patent filing occurs (Japan, US and EPO). In an “open source” model, “examination” is provided by the peer review of the user community, and incentive by known capability for such technology to be used in deliverables.
  3. Encourage wider licensing of patented technology By providing incentives to license patented technology widely, inventions can be used and improved.  For example, the Brazilian patent office has undertaken measures to charge higher annuities to entities that cannot show a technology is being licensed in country.  In a similar vein, the patent grant may be subject to earlier lapse in enforceability if the patentee cannot show evidence of implementation in country.  Similar measures in any country could provide disincentives for an alien patentee to maintain  a patent that largely serves the purpose only of excluding nationals from using the technology.

In supporting these practices patent offices would find new solutions to foster and expand innovation, leading to economic growth.