Andrew Masson is an IPilogue Writer and 2L JD candidate at Osgoode Hall Law School. 

A business’ success is strongly tied to the ability to protect Intellectual Property. However, the USA appears to use patent protections as a sword to attack and acquire large market shares, instead of as a shield to protect from other companies’ encroachment on another’s IP. This position is demonstrated by the , which suggests that the primary use of patents is protection of the market share and not innovation.

The patent office’s enforcement and issuance process greatly impacts the number of competitors that can enter a market. The patent office has therefore become a fundamental part of the economy, as patent protection plays an important part of many businesses’ strategies. Priti Krishtel, Attorney and Co-Founder of the , states that . This naturally leads to questions about the role patents should play in society, especially in the USA, where the enforcement and granting of patents has been seen .

Purpose of Patents

The ‘sword and shield’ metaphor likely oversimplifies the patent process. The data suggests that in practice, patents are not used for innovation. . Thus, many  incorrectly view the patents primary function as protecting or fostering innovation. Patents  are instead being used to .

Some believe that using patents as a sword abuses their purpose and others support the protection of businesses it provides. It may be a subjective question if patents should serve this role in business, but this use may have gone too far. Practically speaking, the , and if successful – these issued patents will limit competition and can permit industry monopolies.

How the System Can Be Exploited

It is important to dissect society’s perspectives on the role of patents. For example, one way to “game” or exploit the USA patent system and . “New” medical devices can obtain faster regulatory approval by showing regulators that a product is like an existing product warranting approval. At the same time, the companies will also submit to the patent office that it is novel enough to require a new patent. This process has allowed medical devices to  is granted through incremental changes.

Conclusions

The problems highlighted are of much greater concern currently in the USA but do not exclusively occur there. The actual rules and laws appear similar to those in Canada but in the USA, the to benefit businesses or large corporations. This perspective initially could have been useful in protecting companies and establishing markets but can result in monopolies and stifle small companies’ innovation. The patent office may need to reform in some way because they have allowed patent “swords” to become common practice. The US  patent system should ensure patents are not morphed into solely a tool to control market shares. Unfortunately, wielding patents as swords can harm innovation and to solve the problem, the patent office should consider their ability to dull the edge of the patent sword.

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• Evaluate the merits of the claimed invention in terms of the well-established criteria for patentability, namely: novelty, ingenuity, industrial applicability and compatibility with accepted subject-matter classification (Mueller and Chisum, 2008).

• Collate patent applications and systematically organise the documents in such a manner that: they can be used as a reference body of knowledge both for the purposes of assessing whether subsequent patent applications have not been pre-empted by information in the public domain and to increase the general stock of knowledge in the public domain; and they can be made accessible to interested stakeholders for the purposes of spurring innovation.

The central question of the research study described in this chapter was whether patent systems in African states have the capacity to perform the two aforementioned functions. This question has its foundation in what is the raison ��'ê�ٰ��� of the patent system: the system’s need to facilitate the exchange of valuable information between inventors and society. The bargain or contract between a patentee and society operates on the theoretical premise that in exchange for a limited monopoly on use of an invention for 20 years, society has access to the ingenious information embodied in that invention. This research sought to find out whether this theory is supported by the reality of patent offices in Africa, i.e. do patent offices in the continent function as they should?

It seems clear from the research findings that the patent systems of many African states lack the safeguards and quality control mechanisms necessary to ensure that only inventions that meet the requisite threshold are conferred with patent protection. In addition, there is clearly a lack, in many African countries, of the infrastructure needed to ensure that the information contained in patent applications is collated and made electronically available to members of the public, researchers and technology-oriented industries. In general, the research findings suggest that a large number of African states are at present serving as dumping grounds for patents, with little examination of the merits of patent applications and little public access to the contents of the patent filings (contrary to the provisions and spirit of national patent laws).

Rigorous examination of patent applications requires governments to devote substantial resources to the objective. According to Lemley (2001), because the overwhelming majority of patents are never argued or licensed (i.e. asserted against a competitor), it is arguably financially efficient for a country to make detailed validity determinations in respect of only the few argued and licensed cases rather than in all patent examinations generally (many of which “will never be heard from again” (Lemley, 2001)). This raises the question: are African states perhaps being “rationally ignorant” of the objective validity of patents? That is, it may well be that it is too costly for African patent offices to discover all the necessary facts.

However, the phenomenon of poor record-keeping reveals that there is more than rational ignorance at play in African patent offices’ lack of delivery on their statutory obligations, because poor record-keeping goes entirely against the disclosure objectives of patent frameworks (Ghosh and Kesan, 2004). Further, the argument for rational ignorance is undermined by the reality that a rational national patent regime would be concerned with assessing both the costs and benefits of the patent system on all actors, as opposed to just (in the case of non-examination of applications) the apparent fiscal and operational efficiencies sought by a patent office.

Where patent offices do not provide substantive examination of applications, they encourage foreign patent applicants to seek to overwhelm weak patent offices with dubious applications, in the (entirely reasonable) hope that dubious applications will slip through and be granted juridical validity. Such occurrences would be a deep disservice to the nation concerned. Some scholars have suggested that the patent system could be improved by structuring an incentivised payment system for patent examiners (Burke and Reitzig, 2007; Geller, 2003). A simplified example would be to use court rulings as a measure of performance, i.e. a patent examiner could be sanctioned if a patent application which he/she approved via examination (had another role in the processing of) is later invalidated in court. However, certain practical issues reduce the usefulness of this kind of recommendation, e.g.:

• the rare occurrence of patent disputes and a strong tendency to settle out of court;

• long delays, in patent disputes, between patent issuance and final court judgements;

• other technical grounds for patent invalidations on technical grounds not connected to the performance of examiners; and

• complex sources of prior art in multicultural and multilingual African settings, making accurate examination or search extremely difficult.

A recommendation that cannot be argued against, however, is that there is a need for better training of legal counsel and judges in IP matters in Africa. A high quality patent system is impossible to achieve with poor quality lawyers and inexperienced judges; ineffective examination protocols assist to infiltrate the public domain with harmful and oppressive monopolies (Katznelson, 2010). Patent law requires a heterogeneous national administrative regime, with the patent office in the central but not solitary role (Farrell and Merges, 2004). However, there seems to be, in the countries surveyed, a palpable lack of appreciation for patent administration within a multi-institutional context. Multiple sectors of government need to take a deep and critical interest in the context and operations of a country’s patent office.

As stated at the beginning of this chapter, patent offices are meant to engage in two key activities:

• Consistently assessing initial applications and granting of patents only to those applications that meet the necessary criteria; and

• Ensuring that the database of patents is reliable and accessible to the public.

The evidence from this research suggests that quality of delivery on both of these services is at present deplorable in many African states. Of particular concern is the potential impact of these faulty African national patent regimes in relation to transfer of emerging technologies. (See Chapters 11 and 12 of this volume on patenting matters in relation to clean energy technology in Mozambique and Egypt respectively.) Economic arguments for patent protection are founded on the need to incentivise research and development (R&D), disclosure of technological knowledge and facilitation of technology transfer. Such arguments collapse in the context of societies lacking the capacities to capture and disseminate technological knowledge. Technology contributes to social welfare and if there is no effective transfer of technological knowledge via the patent system, the ���������Dz�����'ê�ٰ��� for the patent system evaporates.

At present, African patent offices seem to be operating on what Drahos calls a “trust me” mantra (Drahos, 2008). Such trust, to the extent that it exists, would clearly be misplaced in the case of many of the national contexts surveyed in this study. African national policy-makers need to pay much more attention to what is happening in their patent offices. Transnational companies, the biggest users of the patent system, are happy to have a world in which, at a moment of their choosing, they can obtain high-value patents at a low cost. To such firms, Africa is at present a highway, with no speed limits, on which applications are rushed to patent offices. Business actors encourage the speeding up of the work of patent offices, and reductions in the cost and quality of the application processes (Geller, 2003; Jensen et al., 2005).

There is therefore a clear need to, inter alia, utilise the teeming number of African science graduates to fill some of the gaps in the examination modalities. There is also an urgent need to improve the information technology facilities at African patent offices. Much of the scientific information contained in African patent applications is at present not electronically available to stakeholders. The result is that market monopolies are being granted to foreign and domestic patent-holders in exchange for nothing in terms of transfer or dissemination of crucial innovative knowledge. Patent offices are supposed to facilitate interactions between manufacturers, inventors and broader society. The offices are sustained not just by inventors but also by society, and therefore they owe a duty to society. When patent offices give short shrift to examination of applications, and fail to collate and publicly disseminate the patent application information they possess, they have clearly taken sides with the inventor.

Ikechi Mgbeoji is a Professor of Law at Osgoode Hall Law School and a member of IP Osgoode. You can click to read the full chapter from which this redacted article derives.

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I am pleased to join you from south of the border. My work has been focussed in the United States. Intellectual property laws are very powerful and important today. Yet they are but part of the larger body of law in any country. They are also part of a developing fabric of international commercial regulation. I hope that discussions will focus on why one should or should not create personal or exclusive rights in these fields.

To open this conversation, I’ve chosen to focus on a facet of United States patent law, called the “best mode” requirement. This obscure doctrine sheds light on the process and purposes of United States patent law. It also provides a glimpse of how legislators, judges, and attorneys view the inventive process, especially in its commercial environment.

What is “best mode.“ In the US, a patent applicant must disclose all he or she knows about how an invention works. Subject to Supreme Court rulings, the United States has one appellate court, the Federal Circuit, to resolve patent law questions. The Federal Circuit has summed up the disclosure requirements: “To constitute adequate disclosure …, a patent specification must set forth both the manner and process of making and using the invention (the enablement requirement) and the best mode contemplated by the inventor of carrying out the invention (the best mode requirement).” . In short, the  applicant must describe what to do and how best to do it.

Judge Giles Rich made a major impact on the development of United States patent law. He thought the purpose best mode rule was to assure full disclosure of an invention. “There always exists, on the part of some people, a selfish desire to obtain patent protection without making a full disclosure, which the law, in the public interest, must guard against. Hence section 112 calls for description in ‘full, clear, concise, and exact terms' and the ‘best mode’ requirement does not permit an inventor to disclose only what he knows to be his second-best embodiment, retaining the best for himself.” See (Cust. & Pat. App. 1967).

The “best mode” requirement is unique to United States patent law. Even in the United States only certain attorneys, judges and law students cramming for a patent exam know anything about it. Joseph Root is an attorney who has spent a lifetime in patent law. In a recent 80 page article he observed, “Best mode problems are like falling asteroids… when they do strike, big problems follow.” Joseph E. Root, Ducking the Asteroid…, 36 AIPLA Q.J. 455, 457 (2008).

In September 2011, Congress enacted the “” (AIA). It is a packet of changes to the 1952 United States patent law that goes into effect in September 2012. As part of an effort to “harmonize” United States law with that of other nations, the AIA modified the best mode requirement. The amended law retains the requirement that one disclose the best mode, however, failure to do so will no longer render a patent invalid or unenforceable.

It is tempting say the new rule requires one to disclose, but eliminates consequences for failure to do so. However, that summary is misleading. The fundamental rule remains: Disclose the invention! The law continues to require one to disclose exactly how an invention works. Failure to do so will render a patent invalid. Furthermore, concealing relevant information from the Patent Office will also invalidate a patent.

Don’t hide the ball. Most inventions are improvements of something that came before--engines, suspension systems, antibiotics, software, and on and on. Thus, most disclosures amount to describing a better way of doing something. Better and best overlap. The Federal Circuit has repeatedly emphasized that describing how to do something and the best way of doing it converge: “The focus of the best mode requirement, as it was with the enablement requirement, is on the claimed invention. Thus, before determining whether there is evidence of concealment, the scope of the invention must be delimited.”.

The bottom line for practitioners and applicants remains the same before and after the effective date of the AIA. When applying for a patent, one must disclose what one knows about the invention. Candor is the essence of the patent system. The constitutional goal of the US patent system is to expand knowledge and to provide useful new inventions to the public. Attorney Root summed the matter up: “Never appear to hide the ball: Always disclose specially made materials, inventor choices based on test results, and essential process steps.”

The new rules clearly change how courts handle claims that a patent is invalid. However, as the Federal Circuit emphasized, best mode and enablement overlap. Thus, much of the same evidence will come into a trial before and after the effective date. Failure to include information can be found to be “hiding the ball” from the Patent Office. In some cases, it may amount to failure to disclose fully the enablement.

Howard C. Anawalt is a United States attorney, law professor, and writer. His latest book is Idea Rights: A Guide to Intellectual Property (Carolina Academic Press 2011). He discusses the subject in an Authors@Goggle presentation,

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