Selected Contemporary Issues in Field of Patents WIPO-UKRAINE SUMMER SCHOOL ON INTELLECTUAL PROPERTY – JULY 2011

Outline Source Standing Committee on Law of Patents Three issues Patent quality Exclusions and exceptions Technology transfer

Patent quality - 1; what is it? Novelty inventive step adequate disclosure fair scope

Patent quality – 2; Why does it matter Anti-competitive unjustified monopolies Patent bargain not kept Monopoly in exchange for disclosure International cooperation and trust PCT national phase Prosecution highways Developing countries Ability to challenge Re-registration Litigation costs

Patent quality – 3; how to get it Examiner competence Training Search tools Continuing professional development Peer-to-peer review Involving external experts Open access Quality control Internal External

Exclusions and exceptions – 1; main examples of exclusions Inventions the exploitation of which is against ordre public or morality; Diagnostic, therapeutic and surgical methods for the treatment of humans and animals Plant and animal varieties Plants and animals other than micro-organisms Essentially biological processes for the production of plants and animals Inventions affecting national security

Exclusions – 2; main examples of exceptions private acts for non-commercial purposes acts for the purpose of teaching acts for experimental purposes or scientific research preparation of medicines prescribed by doctors continued use by a prior user certain uses on foreign vessels, aircraft and land vehicles which temporarily or accidentally entered the national territory acts for obtaining regulatory approval for pharmaceuticals acts performed for a farmer’s own use and for the development of new varieties

Exclusions and Exceptions – 3; policy considerations Public welfare Compulsory licenses Competition Exhaustion

Exclusions and exceptions – some issues Computer programmes Biotechnology Public health Research

Technology transfer – 1: why is it an issue? 1974 agreement between WIPO and UN Recognition based on role of facilitating technology transfer to developing countries Trade Related Aspects of Intellectual Property (TRIPS) Article 6: IPRs should contribute to transfer and dissemination of technology Article 66; developed countries to promote and encourage technology transfer to least developed countries The Development Agenda Argentina and Brazil proposals including establishment of standing committee on technology transfer

Technology transfer 2; what is it and how is it done Sharing of ideas, knowledge, skills, and technology between individuals, institutions, or countries The public domain Acquisition of tangible and intangible property Licensing Technology services Investment such as Foreign Direct Investment (FDI) Tacit channels

Technology transfer – 3; policy issues Role of patent system Trade Licensing Innovation Information Protection Public versus private Recipient capacity Regulatory framework