[Ip-health] Updated KEI blog on USTR's TPP draft

Erik Hjalmar Josefsson erik.hjalmar.josefsson at gmail.com
Sat Mar 12 13:42:48 PST 2011


In 1978, EPO's guidelines said:

    There are four basic requirements for patentability:
    1. There must be an *"invention"*
    2. The invention must be *"susceptible of industrial application"*
    3. The invention must be *"new"*
    4. The invention must involve an *"inventive step"*
    http://eupat.ffii.org/papers/epo-gl78/index.en.html

and subsequently patent offices in Europe applied their national
implementations of EPC together with their guidelines' examination
algorithms to reject software patents*.

The law is the same today, but new guidelines and practices have been
invented to serve the interests of the EPO itself, and EPO's customers,
by changing the examination algorithms to the extent that what was not
considered an invention by the Swedish Patent Office, the Swedish Court
of Patent Appeals and the Swedish Supreme Administrative Court in the
eighties was indeed deemed an invention in the nineties by the EPO**
(see also: http://eupat.ffii.org/analyse/needs/index.en.html#diff).

The same pattern is repeated in recent years as the paper by Thambisetty
points to, but it's unfortunate it does not mention the Macrossan case
since it gave rise to a new test algorithm in the UK (to be compared
with the one above):

    The judgment approved a new four-step test to be used when assessing
    whether or not an application actually describes an invention. The
    four-step test is as follows:

        * Properly construe the claim;
        * Identify the actual contribution;
        * Ask whether the contribution falls solely within excluded
          subject matter; and
        * Check whether the contribution is technical in nature.

    http://en.wikipedia.org/wiki/Aerotel_v_Telco_and_Macrossan%27s_Application

It's interesting to see that according to the same wikipedia page:

    Current EPO practice when examining computer-implemented inventions
    <http://en.wikipedia.org/wiki/Software_patents_under_the_European_Patent_Convention>
    is that any technical feature in a claim, such as a computer,
    results in the finding that there is "an invention", but only those
    features which provide a technical solution to a technical problem
    (as opposed to a business problem) can contribute to an inventive step.

Which leads to what I wanted to say regarding art. 8.12 :-), I don't
think it matters much what patent law says - it's auxiliary institutions
who decide in which direction the legal-linguistic exercises as
exemplified above should go.

Here's an old masterpiece on such exercises:

    *Moses and Patentability - The Ten Exclusions vs Stealing with a
    further Ethical Effect*
    http://eupat.ffii.org/analyse/epc52/moses/

Enjoy!

//Erik

*) Dispositionsprogramm in Germany
http://eupat.ffii.org/papri/bgh-dispo76/index.en.html
**) The Pettersson Patent in Sweden (Queueing system, T1002/92)
http://www.sslug.dk/patent/eudirektiv/sv/sslug02-92sv.html
http://www.ffii.se/erik/misc/pettersson/

On 03/12/2011 08:11 PM, Jamie Love wrote:
> Is the problem that the definition can be used to define what is an
> industrial application, rather than what is the standard for utility
> before granting a patent in a particular area?
>
> On Sat, Mar 12, 2011 at 1:23 PM, Chan Park <chansoobak at gmail.com> wrote:
>   
>> I think it expands it considerably, or at least potentially so. A strict
>> application of the industrial applicability requirement can be used to limit
>> the patentability of methods of treatment, software, etc. All this stuff is
>> patentable in the US under the utility standard.
>> A good analysis of the encroachment of the American utility standard in
>> Europe and the consequent potential expansion in patentability within the
>> context of research tools can be found
>> here: http://www.lse.ac.uk/collections/law/wps/WPS2008-06_Thambisetty.pdf
>> On 12 Mar 2011, at 6:12 PM, Jamie Love wrote:
>>
>> Chan,   Does TPP art 8.12 limit or expand the grounds for issuing a patent?
>>
>> art. 8.12. Each Party shall provide that a claimed invention is
>> industrially applicable if it has a
>> specific, substantial, and credible utility.
>>
>>
>> On Sat, Mar 12, 2011 at 10:19 AM, Chan Park <chansoobak at gmail.com> wrote:
>>
>> Also important to point out that the text (art 8.12) redefines the
>>
>> "industrial applicability" standard into the US "utility" standard, which
>>
>> could have far-reaching effects on the ability of countries to limit the
>>
>> patentability of things like methods of treatment, software and business
>>
>> methods, and upstream research tools.
>>
>> On Fri, Mar 11, 2011 at 8:49 PM, Krista Cox <krista.l.cox at gmail.com> wrote:
>>
>> http://keionline.org/node/1091
>>
>> On 10 March 2011, KEI released the US government draft on the Trans-Pacific
>>
>> Partnership Agreement (TPP) Intellectual Property Rights Chapter, dated 10
>>
>> February 2011.  The blog has been updated and now analyzes and highlights
>>
>> several significant provisions or areas for concern.
>>
>> These provisions relate to copyright, public health, agriculture, patents,
>>
>> general enforcement obligations, and consumer protection and competition
>>
>> safeguards.  They often go beyond that which is currently required by
>>
>> international law and some are even more stringent than US patent law.
>>
>> These points include the following:
>>
>> Copyright
>>
>> *  Copyright damages shall consider the suggested retail price or other
>>
>> legitimate measure of value submitted by the right holder.
>>
>> *  (art. 4.5) The term of protection of a work (including a photographic
>>
>> work), performance, or phonogram is to be calculated:
>>
>>     -  on the basis of the life of a natural person, the term shall be not
>>
>> be not less than the life of the author and 70 years after the author’s
>>
>> death;
>>
>>      -  on a basis other than the life of a natural person, the term shall
>>
>> be: (i) not less than 95 years from the end of the calendar year of the
>>
>> first authorized publication of the work, performance, or phonogram, or
>>
>> (ii)
>>
>> failing such authorized publication within 25 years from the creation of
>>
>> the
>>
>> work, performance, or phonogram, not less than 120 years from the end of
>>
>> the
>>
>> calendar year of the creation of the work, performance, or phonogram.
>>
>> *  Would eliminate any possibility of parallel trade in any copyrighted
>>
>> good. (art. 4.2)
>>
>> *  Each Party shall establish or maintain a system that provides for
>>
>> pre-established damages, which shall be available upon the election of the
>>
>> right holder
>>
>> *  Requires criminal enforcement for technological measures beyond WIPO
>>
>> Internet Treaties, even when there is not copyright infringement (art. 5.9)
>>
>> *  Impose a legal regime of ISP liability beyond the DMCA standards (art.
>>
>> 16.3)
>>
>> *  Requires legal incentives for service providers to cooperate with
>>
>> copyright owners in deterring the unauthorized storage and transmission of
>>
>> copyrighted materials; (art. 16.3.b.vi.A)
>>
>> *  Requires identifying internet users for any ISP, going beyond U.S. case
>>
>> law (art. 16.3.b.xi)
>>
>> *  Includes the text of the controversial US/KOREA side letter on shutting
>>
>> down web sites
>>
>> Public Health
>>
>> * No mention of Doha Declaration on TRIPS and Public Health or WHO Global
>>
>> Strategy on Public Health, Innovation and Intellectual Property.
>>
>> *  Pharmaceutical Products:
>>
>> *  [Placeholder for provisions related to data protection for
>>
>> pharmaceutical
>>
>> products]
>>
>> *  [Placeholder for provisions related to patent linkage]
>>
>> *  [Placeholder for provisions related to patent term/data protection
>>
>> relationship]
>>
>> *  [Placeholder for definitions of “new pharmaceutical product” and “new
>>
>> agricultural
>>
>> product”]
>>
>> *  [Placeholder for “Bolar” provision] (art. 8.5)
>>
>> Agriculture
>>
>> *  Parties agree to sign the International Convention for the Protection of
>>
>> New Varieties of Plants, 1991
>>
>> *  10 years of exclusive rights in agricultural chemcial test data (art.
>>
>> 9.1)
>>
>> Patents
>>
>> *  Parties agree to Patent Cooperation Treaty and the Patent Law Treaty
>>
>> *  Patents shall be available for any new forms, uses, or methods of using
>>
>> a
>>
>> known product; and a new form, use, or method of using a known product may
>>
>> satisfy the criteria for patentability, even if such invention does not
>>
>> result in the enhancement of the known efficacy of that product. (art. 8.1)
>>
>> *  Requires patent for second use (art. 8.1)
>>
>> *  In civil and administrative proceedings involving patents, each Party
>>
>> shall provide for a rebuttable presumption that a patent is valid, and
>>
>> shall
>>
>> provide that each claim of a patent is presumed valid independently of the
>>
>> validity of the other claims.
>>
>> *  [Placeholder for provisions concerning patent term
>>
>> restoration/adjustment] (art. 8.6)
>>
>> *  Where a Party provides proceedings that permit a third party to oppose
>>
>> the grant of a patent, a Party shall not make such proceedings available
>>
>> before the grant of the patent. (art 8.7)
>>
>> *  USTR proposal in TPP:
>>
>>     -  Each Party may only exclude from patentability inventions, the
>>
>> prevention within its territory of the commercial exploitation of which is
>>
>> necessary to protect ordre public or morality, including to protect human,
>>
>> animal, or plant life or health or to avoid serious prejudice to the
>>
>> environment, provided that such exclusion is not made merely because the
>>
>> exploitation is prohibited by law. (art. 8.3)
>>
>>     - Which is more restrictive than the text of AUSFTA, which reads:
>>
>>          > 2. Each Party may only exclude from patentability: (a)
>>
>> inventions, the prevention within their territory of the commercial
>>
>> exploitation of which is necessary to protect ordre public or morality,
>>
>> including to protect human, animal, or plant life or health or to avoid
>>
>> serious prejudice to the environment, provided that such exclusion is not
>>
>> made merely because the exploitation is prohibited by law; and (b)
>>
>> diagnostic, therapeutic, and surgical methods for the treatment of humans
>>
>> and animals . [emphasis added]
>>
>> General Enforcement Obligations
>>
>> *  Each Party shall provide ex officio border measures with respect to
>>
>> imported, exported, or in-transit merchandise, or merchandise in free trade
>>
>> zones, that is suspected of being counterfeit or confusingly similar
>>
>> trademark goods, or pirated copyright goods (art. 14.4)
>>
>> *  Requires adopting compensation for infringement without actual damages
>>
>> (art.12.3 and 4)
>>
>> *  For copyright and trademark, criminal punishment would apply even to
>>
>> non-for-profit infringement (art. 15.1)
>>
>> *  In determining damages for infringement of intellectual property rights,
>>
>> its judicial authorities shall consider, inter alia , the value of the
>>
>> infringed good or service, measured by the suggested retail price or other
>>
>> legitimate measure of value submitted by the right holder. (art. 12.3.b)
>>
>> Consumer Protection and Competition Safeguards
>>
>> *  Weak, meek or Missing
>>
>> _______________________________________________
>>
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>>
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>>
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>>
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>>
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>>
>>
>>
>> --
>> James Love.  Knowledge Ecology International
>> http://www.keionline.org, +1.202.332.2670, US Mobile: +1.202.361.3040,
>> Geneva Mobile: +41.76.413.6584, efax: +1.888.245.3140.
>> twitter.com/jamie_love
>>
>>
>>     
>
>
>   




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