An Argument in favour of Adopting Lesser Forms of Patent Protection

N. Ayse Odman Boztosun is Associate Professor of Law at Erciyes University Law Faculty, Kayseri, Turkey. She holds two master degrees from Oxford University where she has successfully submitted a thesis on the analysis of the competition law provisions in TRIPs. Her PhD thesis was on the mutual role of IPRs and competition law in fostering innovation and she has recently published a book on the Turkish plant variety protection regime. Asc. Prof. Boztosun is a Research Affiliate of IP Osgoode.

In my most recent article accepted for publication in the Journal of World Intellectual Property, I raise a novel argument based on well-known facts, asserting that utility model protection may be creatively used as a model in order to achieve sustainable innovation.

I set off with the premise that intellectual property rights, exclusive in nature, would bear actual value for the rightholder only in a capitalist economy, i.e. within an economy based on the market principle. After all, what benefit could a patent confer were there no markets in which to exploit the patented invention? The prospect of exploitation, i.e. the ability of the rightholder to prevent others from using the invention without his permission in the markets is expected to spur innovative activity and convince inventors to disclose their inventions to the public. The other side of the coin is that in the absence of such rights, the innovation process would be hampered. Appropriation in the form of exclusive use, licensing, assignment or transfer can not be possible if there are no rights protecting innovations. The newly-emerging markets for technology reinforce the argument that innovations may not be properly exploited without legal protection. In that respect, compensatory liability rules regulating freedom to use others’ innovations freely while having to pay for that use would not meet the demand of the markets as a clearly-defined right would.

My second premise is that the existing patent system, the predominant system in the world for protecting inventions is flawed by serious handicaps: The condition of non-obviousness for patentability is severely criticised as being subjective and ill-defined, the fixed term of protection is regarded as either too long or too short depending on the industrial sector in which the invention is made and even the mere acceptance of “invention” as protectable subject matter gives rise to a number of thorny problems.

Then, may we say that the patent right is protecting what it is supposed to protect in order to spur innovation in a capitalist economy? Can patents cover the whole range of innovative activity output so as to enable exploitation? My response to that question is negative and I assert that the solution lies in adopting lesser forms of patent protection. There already exists such lesser forms in a number of countries along with the patent system. I propose a new role for them; we can achieve more with them than merely providing legal protection to minor inventions. They may pave the way to shifting the patent paradigms. My first proposal that such rights protect technical advances and not inventions, thereby widening the scope of protection and getting rid of artificial restrictions, such as excluding discoveries or computer programs per se. In this new definition, “technical” connotes that the subject matter offers a technical solution to a problem, i.e. it has utility (or industrial applicability) and “advance” implies that the subject matter should be novel to merit protection. I further suggest that the condition of non-obviousness that presupposes the “value” of an invention should be abandoned altogether, leaving it to the market forces to determine whether a technical advance shall succeed or not. Thirdly, I believe that lesser forms may serve to achieve a shift of mind regarding the fixed patent term, excessively long for some sectors (e.g. information technology) while inadequate for others (e.g. pharmaceuticals).Two watchdog mechanisms – one to be embedded within the intellectual property system and one to be established outside- are conceivable in order to prevent extra social costs that may arise due to providing legal protection to technical advances that would otherwise be in the public domain. First, simple and easily applicable compulsory licensing rules that enable fair valuation should be envisaged within the relevant IP legislation to deter non-use, prevent the stifling of further innovation and encourage willful negotiation on terms of use. Developing a credible method of valuation within this context is in fact the keypoint of better exploitation.  On the other hand, competition law should be effectively enforced in order to ensure that such rights are not exercised in a manner restricting competition in markets. Within this framework, countries having lesser rights systems may maintain and restructure them and countries without them may opt to adopt such rights, both with a view to ensure sustainable innovation by reforming and transforming their patent systems.

The non-revised version of the article is posted on the following website: