Hacia un nuevo sistema de propiedad intelectual: las recomendaciones del Council on Competitiveness americano

A raíz de la lectura del último artículo de Alfons Cornella en Infonomia, leí el informe Innovate America que el Council of Competitiveness estadounidense ha presentado.

El Council of Competitiveness es una organización fundada en 1986 en un momento de importante crisis económica (la competencia de Japón, crisis de la balanza comercial, etc) en los Estados Unidos. Forman parte de ella empresas, universidades y “líderes laborales”. Las mejores del país. En el momento de su fundación el objetivo era convertirse en un “forum for elevating national competitiveness to the forefront of national consciousness.”

De él he extraido una parte muy interesante donde se hacen unas recomendaciones en torno al nuevo modelo del sistema de propiedad intelectual, que os copio aquí abajo:

(...) Goal No. 2: Create a 21st Century Intellectual Property Regime

Intellectual property protection is a cornerstone of the innovation
economy. It ensures that innovators have the opportunity to reap
the rewards of their creativity and costly efforts, as well as providing
incentives for future investment in innovation. But intellectual property
regimes throughout the world face challenges – from the sheer
volume of applications, to rapid advances in highly complex technologies,
to the necessity for global harmonization and protection. The
NII agenda focuses on three areas:

• Build quality into the patent process
• Leverage patent databases as innovation tools
• Create best practices for global collaborative standard-setting

Build quality into the patent process: With more than 300,000 patent
applications per year, the challenge of assuring quality patents is
increasing. This is especially true where patent protection has been
extended into previously uncharted areas (e.g., the human genome)
or areas not previously subject to protection (e.g., business method
patents). The former have pushed the reach of patents upstream into
scientific tools and materials and toward broad concepts that have
no clearly defined fields of use. And extending protection to previously
unprotected areas has led some to question whether mere
extension to the digital world of real-world business practices should
be granted patent protection. Yet, at the same time, novel inventions
are enabling valuable applications for digital commerce that warrant
patent protection.
Because robust investment in innovation is dependent on global IP
protection, it is critical that we strengthen the capacity of the U.S.
Patent and Trademark Office (PTO), improve the quality of patents issued
and shorten the time it takes to get a patent. Patent quality and
speed of examination will increase the value of patents to inventors
and reduce the need to deal with patents that do not meet patentability
standards. Because of the need for regulatory predictability,
the NII's recommendations apply prospectively to future patents and
future patent applications.

Some recommended process improvements include:
• Increased resources for PTO modernization and patent
examination. Experts say that the PTO would have sufficient
funds to improve office resources and practices if it could be
assured that tens of millions of dollars in PTO fees would not
be diverted to non-related purposes. A sustainable resolution
of the fee diversion issue should be sought.
• Better compliance with existing patentability requirements,
and incentives for improved prior art searches. Innovators
have a duty to disclose prior art, but no requirement to search
for it – and indeed, the system now provides incentives to refrain
from searching. One proposed alternative to reverse
the incentive structure is to give patent applicants the option
of presenting an expanded information disclosure statement
(IDS) that includes explanations of the relevancy of significant
prior art.83 If the patentee were to choose to exercise this option,
the issued patent would be granted a specific "presumption
of validity" with respect to the disclosed prior art in any
later challenge.84
• New standards for searchability. Poor search techniques and
terminology can undermine patent quality and the usefulness
of the patent database. New search standards would make it
easier for the PTO to search the patent applications themselves
and to extend the prior art search to databases outside
the patent office, such as academic papers, technical journals
and research reports.
• New online tools for prior art submissions. The PTO should
have a means for alerting interested members of the public to
published patent applications. In addition, the public should
have the ability to submit relevant materials electronically to
the PTO following publication, along with reasonable explanatory
statements.
• Post-grant patent review procedures. Litigating the validity
of granted patents is increasingly costly ($3 million and up),
time-consuming (three years) and frequent (32 suits per 1,000
patents). Proposals for the creation of a post-grant review
procedure should focus on future patents and patent applications.
85

Leverage patent databases as innovation tools: There is enormous
potential to leverage intellectual property to uncover new intersections
between "invention and insight," and, thereby, to turbo-charge
innovation by more effectively using information that already exists
in patent databases throughout the world. The database of patents
represents a detailed record of the discovery process and a map ofthe
rapidly evolving landscape of ideas across sectors and disciplines.
But the database is not easily searchable. Providing improved searchability
on new patent applications will help. PTO should invest in optimizing
the legacy database for searches on key patents and establish
reciprocal rights to access and search foreign databases.

Create best practices for collaborative standard setting: While IP
ownership is an essential driver of innovation, technological advances
in many cutting-edge areas are dependent on shared knowledge,
standards and collaborative innovation. Patents play, and will
continue to play, an important role in facilitating the dissemination
of knowledge and technological advances and attracting risk capital
to entrepreneurial start-ups. Much shared knowledge and collaborative
innovation relies on a standards-based, interoperable, global
infrastructure. Indeed, global tools such as the Internet are based
upon a mix of open standards and proprietary technology. Such tools
have enabled broad sharing and adoption of ideas among companies
and across disciplines, while minimizing the impact of geography and
time zones.
Having seen the enormous benefits gained when proprietary
technologies stand upon standards-based collaborative tools, one
objective of the NII is to seek ways, respectful of intellectual property
rights, to promote more effective integration of IP in the standardssetting
process. Open standards, created through a transparent and
accessible process (coupled with the rapid innovation occurring in
middleware software) can accelerate the interoperability and expansion
of the global infrastructure. Such standards are an important
part of the collaborative innovation that will become increasingly
important in the 21st century.
From an intellectual property perspective, open and proprietary
IP models should not be seen as mutually exclusive; rather, the IP
framework must enable both approaches. Because collaborative
innovation is relatively new, however, the structure and processes
to accommodate ownership, openness and access are evolving. New
creative models are emerging across sectors. A mature, balanced
understanding of the purpose and practice of standards, including
the important role of open standards and global harmonization, is essential
to further interoperability, spur technological innovation and
expand market applications.

Recommendations

Build quality into all phases of the patent process
• Fully fund the PTO and enable it to direct its fees to fund
process improvements.
• Improve compliance with existing patenting requirements
and create incentives for improved search and disclosure of
prior art.
• Create new standards for searchability of patent applications
and new patents.
• Establish a fair and balanced post-grant patent review procedure
for future patents and patent applications.
Leverage the patent database as an innovation tool
• Develop pilot projects (jointly funded by industry, universities
and government) to highlight techniques for leveraging
patent data for discovery.
• Invest in retroactively creating searchable keywords for a
subset of the most highly cited historical patents.
• Secure reciprocal access to foreign patent databases.
Create best practices for collaborative standard setting
• Set best practices and processes for standards bodies to
align incentives for collaborative standard setting, and to
encourage broad participation.

por Oriol Lloret Albert