August 28, 2014 by Ikechi Mgbeoji
Patents are public documents, issued to inventors by individual states, certifying that the named inventor has been granted a limited monopoly to exclude other persons from working, selling or using an identified invention without the consent or permission of the inventor or her/his assignees or successors-in-title during the lifespan of the patent. The regime of patents is built on the theoretical assumption that in exchange for a limited monopoly over a fixed period an inventor discloses the knowledge embodied in an invention to the state in trust for the public. Key to this assumption is that society has a system in place in which experts in the respective fields to which the inventions pertain have the capacity to:
- 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 d’être 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 raison d’être 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 here to read the full chapter from which this redacted article derives.