10th Annual Niro Lecture:10th Annual Niro Lecture:Society, Social Contract and the Society, Social Contract and the

Patent OfficePatent Office

Professor Peter DrahosProfessor Peter DrahosCentre for Governance of Knowledge and Centre for Governance of Knowledge and

DevelopmentDevelopmentThe Australian National University, CanberraThe Australian National University, Canberra

DePaul Center, Chicago DePaul Center, Chicago 15 March 200715 March 2007

Current governance of the Current governance of the European patent systemEuropean patent system

insider governance

European patent system

Patent Attorneys

EPO

Big business users

governance

Separation of powers approach Separation of powers approach to governanceto governance

European patent system

Target concentrations

of power

Transparency balance

External audit process

Transparency registers

Traditional models of governanceTraditional models of governance

State

Law

Food safety Pharmaceuticals Aviation etc

Modern networked Modern networked governance modelgovernance model

Public or private actor

Public or private actor

Public or private actor

State

Public or private actor

Public or private actor

Public or private actor

WTO’s Agreement on WTO’s Agreement on Trade-Related Aspects of Trade-Related Aspects of

Intellectual Property (TRIPS)Intellectual Property (TRIPS)

Japanese multinationals with large IP portfolios

United States multinationals with large IP portfolios

World Trade OrganizationTRIPS

European multinationals with large IP portfolios

USTR

Doha Declaration on TRIPS Doha Declaration on TRIPS and Public Healthand Public Health

NGOs eg

MSF

OxfamPublic health

advocates

Civil society activists

Developing country

governments

Developed country

governments

A transparency balance:A transparency balance:existing modelexisting model

Patent Office

Policy Committees

Advisory Committee

PO staff

Big users, patent attorneys

PO acts as a secretariat for Review/Inquiry

filtering effect

Patent OfficePolicy

Committees

Advisory CommitteePO staff

Big users, patent attorneys

Users of patented technologies

ScientistsOpen source

A transparency balance:A transparency balance:membership and appointment to membership and appointment to

committees transparentcommittees transparent

Patent quality: Patent quality: an external audit checkan external audit check

litigationopposition

Granted patents (100%)

EPACEP

CompaniesScientists

Health NGOs

Software organizations

EPOinternal audit process

‘‘even experts have trouble making even experts have trouble making accurate searches’accurate searches’

Generic drug company enters patent system here

Patent granted

Transparency RegistersTransparency Registers

Generic drug company enters patent system here

Island of certainty

Patent granted

Concentrations of power that Concentrations of power that compromise patent qualitycompromise patent quality

Patent Office

Examiners

Senior Managers

Large numbers of applications

Patent attorneys

Output targets

A separation of powers approach would increase the independence of examiners consistent with the goal of improving quality

Greenpeace: Greenpeace: Patents on Life CampaignPatents on Life Campaign

Launched in 2001, the Patents on Life Campaign monitors patents on life; broad species 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 patents; biopiracy; fair trade; patents; and the World Trade Organization and human patenting.patenting.

In August 2005 Greenpeace revealed Monsanto’s application for global pig patentIn August 2005 Greenpeace revealed Monsanto’s application for global pig patent

‘‘Filed at the World Intellectual Property Organization (WIPO) in Geneva (2) the 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, 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 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 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 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 cover methods of conventional breeding and also the screening for naturally occurring genetic conditions that can make pigs grow faster.’genetic conditions that can make pigs grow faster.’

Further information: Further information: http://www.greenpeace.org/international/press/reports/greenpeace-patents-on-life-inhttp://www.greenpeace.org/international/press/reports/greenpeace-patents-on-life-in

Electronic Frontier Foundation Electronic Frontier Foundation (EFF): (EFF):

Patent Busting ProjectPatent Busting Project Patent Busting Project is intended to take on illegitimate patents that suppress non-Patent Busting Project is intended to take on illegitimate patents that suppress non-

commercial and small business innovation or limit free expression online.commercial and small business innovation or limit free expression online. The Project has two components: The Project has two components:

A. Documenting the Damage by: A. Documenting the Damage by: (1) Identifying the worst offending patents;(1) Identifying the worst offending patents;(2) Documenting the prior art that shows their invalidity; and(2) Documenting the prior art that shows their invalidity; and(3) Chronicling the negative impact they have had on online publishers and (3) Chronicling the negative impact they have had on online publishers and

innovators. innovators.

B. Challenging the patents: B. Challenging the patents: Once it has identified some of the worst offenders, EFF will begin filing challenges to 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 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 forum to affirmatively invalidate patents rather than forcing technology users to await the threat of suit. Under this procedure, EFF can choose particularly egregious 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 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 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. as well as legal clinics and pro bono cooperating attorneys to help in these efforts.

Further information: http://www.eff.org/patent/Further information: http://www.eff.org/patent/

Alternative Law Forum (ALF): Alternative Law Forum (ALF): The Mailbox ProjectThe Mailbox Project

Following India’s membership to the WTO (and TRIPS) in 1995, India was required to open a 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 ‘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 products. However, the mailbox remained ‘closed’ until the recent enactment of the Patents (Amendment) Act 2005. (Amendment) Act 2005.

Under the new Act, the Patent Office was required to publish the applications deposited in the 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 ‘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. interested parties to be able to identify relevant applications for pre-grant and post grant oppositions.

The Mailbox Project makes the existing information in patent applications more user friendly and 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, 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 drug type, the chemical entity(ies) that each application relates to and the related priority document for the Indian application. for the Indian application.

The database has the ability to: The database has the ability to: • search for drugs applied for in the ‘mailbox’search for drugs applied for in the ‘mailbox’• identify the disease to which the invention claimed in the patent application relatesidentify the disease to which the invention claimed in the patent application relates• identify the applicant/company for the patentidentify the applicant/company for the patent• link the searcher to the priority application (where claimed) or a related patentlink the searcher to the priority application (where claimed) or a related patent

Further information: http://www.altlawforum.org/MAIL%20BOXFurther information: http://www.altlawforum.org/MAIL%20BOX

Public Patent Foundation (PubPat)Public Patent Foundation (PubPat)Representing the public’s interests Representing the public’s interests

in the patent systemin the patent system PubPat is a not-for-profit legal services organization that represents the public's interests against the 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 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 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. deprived of access to the system governing patents with representation, education and advocacy.

PUBPAT accomplishes its mission through the following activities:PUBPAT accomplishes its mission through the following activities:• Protecting the public domainProtecting the public domain• Educating and advocatingEducating and advocating

• Activities include Software Patent WatchActivities include Software Patent Watch

Activities include Software Patent Watch, PubPat in Congress, PubPat in Supreme Court, PubPat in 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. the Federal Circuit and free instructions on how to find prior art.

Further information: http://www.pubpat.org/Further information: http://www.pubpat.org/

International Center for International Center for Technology Assessment (CTA): Technology Assessment (CTA):

Patent Watch ProgramPatent Watch Program CTA's Patent Watch Program seeks to identify pernicious patents granted by the USPTO, encourage 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 grassroots activities against such patents, and initiate and support legal challenges against existing and future pernicious patents.future pernicious patents.

As a result of the program, CTA has been involved in the following legal action: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-B1Withdrawal of U.S. Patent No. US-6,444,872-B1 05/24/2004 05/24/2004The University of Texas withdraws its patent on a beagle whose immune system was The University of Texas withdraws its patent on a beagle whose immune system was

compromised to facilitate the dog's use in medical experiments.compromised to facilitate the dog's use in medical experiments.

Inter Inter PartesPartes Reexamination Communication - U.S. Patent No. US-6,444,872-B1 Reexamination Communication - U.S. Patent No. US-6,444,872-B1 05/19/200405/19/2004The U.S. Patent and Trademark Office grants CTA's request that the PTO reexamine the 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 University of Texas' patent on a beagle whose immune system was compromised to facilitate facilitate the dog's use in medical experiments. the dog's use in medical experiments.

USPTO Reexamination Request - U.S. Patent No. US-6,444,872-B1USPTO Reexamination Request - U.S. Patent No. US-6,444,872-B1 02/25/2004 02/25/2004The Patent Watch Program and the American Anti-Vivisection Society file a legal The Patent Watch Program and the American Anti-Vivisection Society file a legal

"Request for "Request for Reexamination" with the federal Patent and Trademark Office. The action Reexamination" with the federal Patent and Trademark Office. The action demands that the demands that the Office cancel a patent granted to University of Texas researchers on a beagle Office cancel a patent granted to University of Texas researchers on a beagle whose whose immune system was compromised to facilitate the dog's use in medical experiments.immune system was compromised to facilitate the dog's use in medical experiments.

CTA also issues policy recommendations and publications based on the Patent Watch Project.CTA also issues policy recommendations and publications based on the Patent Watch Project.

Further information: Further information: http://http://www.icta.org/patent/index.cfmwww.icta.org/patent/index.cfm

PATENT APPLICATION

VPOEPO

ACCEPTS VPO

US PTO decision

VPO REJECTS

VPO MAY ACCEPT

VPO looks at US PTO

ACCEPTS

REJECTS

REJECTS

ACCEPTS

Patent applications in the Patent applications in the Vietnamese Patent OfficeVietnamese Patent Office

Professor Peter Drahos, DirectorProfessor Peter Drahos, Director

Centre for Governance of Knowledge and DevelopmentCentre for Governance of Knowledge and DevelopmentRegulatory Institutions Network (RegNet)Regulatory Institutions Network (RegNet)

The Australian National University, CanberraThe Australian National University, Canberra

peter.drahos@anu.edu.aupeter.drahos@anu.edu.aucgkd.anu.edu.aucgkd.anu.edu.au