E CDIP/4/3 REV./STUDY/INF/2 ORIGINAL: ENGLISH DATE: APRIL 27, 2011 STUDY ON PATENTS AND THE PUBLIC DOMAIN12 1 The views expressed in the study are those of the authors, and not necessarily those of the WIPO Secretariat or its Member States. 2 The Patents and the Public Domain part of the study was prepared by Mr. Jeremy Phillips, Professorial Fellow, Queen Mary Intellectual Property Research Institute, University of London, London, United Kingdom. The Development Dimension: National Practices and Experiences part was prepared by: A. Mr. McLean Sibanda, Chief Executive Officer, The Innovation Hub, Pretoria, South Africa; B. Mr. Hossam El Saghir, Professor of Commercial Law and General Director of the, Regional Institute for Intellectual Property, Helwan University, and Attorney at Law, Cairo, Egypt; C. Mr. Ernesto Rengifo García, Professor, Universidad Externado de Colombia, Bogota, Colombia; D. Mrs. Olena Pavlina Orlyuk, Director, Scientific Research Institute of Intellectual Property, Kyiv, Ukraine; and E. Mr. Calab Gabriel, Senior Partner, K&S Partners, Intellectual Property Attorneys, Gurgaon, National Capital Region, India. CDIP/4/3 Rev./STUDY/INF/2. page i CONTENTS EXECUTIVE SUMMARY .............................................................................................................. 2 I. PATENTS AND THE PUBLIC DOMAIN 1. Introduction.................................................................................................................. 7 2. The notion of “public domain” in relation to the patent system.................................. 10 3. Rationale of the patent system and the public domain ............................................. 18 4. Relationship and interplay between the patent system, public domain and public policy................................................................................. 43 5. The international dimension ...................................................................................... 56 II. DEVELOPMENT DIMENSION: NATIONAL PRACTICES AND EXPERIENCES A. South Africa 1. Overview of the South African Patent System .......................................................... 58 2. Relationship and interplay between patent system and domain name..................... 61 3. Discussions................................................................................................................ 61 4. Conclusions ............................................................................................................... 63 B. Egypt 1. The development dimension of the public domain in the Egyptian Patent System .. 64 2. Review of the Egyptian patent system in respect of public domain .......................... 68 3. Relationship and interplay between the Egyptian patent system and the public domain ............................................................................................... 72 4. Specific challenges in the Egyptian patent system analyzed on the basis of practical experiences and case studies ............................................ 75 C. Colombia 1. Development of access to information in the public domain in Colombia and its relationship with the patent system................................................................ 78 2. Strategies presented as public policy of the Colombian State with respect to exploitation and access to information on patents belonging to the public domain .. 82 3. Tools implemented by the academic sector regarding access and knowledge of information belonging to the public domain ................................. 88 4. Insufficient utilization of public domain patent information ........................................ 89 5. Challenges of the system .......................................................................................... 90 6. Conclusions ............................................................................................................... 91 D. Ukraine 1. Development dimension of the concept of the public domain in Ukraine ................. 92 2. Mutual cooperation and relations between the national patent system of Ukraine and the public domain, and specific challenges facing society ............... 99 E. India 1. Overview of the term ‘Public domain’ and its related terms in India and identifying subject matters that could fall into public domain......................... 109 2. Influence of public domain in the Indian Patent System – Certain peculiar provisions in the Indian Patents Act of 1970 relating to public domain and public disclosure ..................................................................... 110 CDIP/4/3 Rev./STUDY/INF/2. page ii 3. Existing legislations and proposed legislations governing certain aspects of public domain such as bio-diversity, traditional knowledge, plant variety protection and folklore ...................................................................... 113 4. Benefits of accessible public domain knowledge in India..................................... 114 5. Identifying available tools to access the subject matter and information available in public domain.................................................................. 115 6. How the subject matter of patents fall into public domain .................................... 116 7. Peculiar patent linkage between the India Patent System ........................................ and bio-diversity/traditional knowledge imposed by the legislation in India ................................................................................................. 117 8. The proposed legislation relating to traditional knowledge and its impact on the Indian Patent System................................................................................. 118 9. Development dimension of the patent system and patent domain in India .......... 122 CDIP/4/3 Rev./STUDY/INF/2 page 2 EXECUTIVE SUMMARY This Study is comprised of an overview of patents and the public domain, together with a number of country-specific accounts concerning the relationship between the public domain, national patent law and relevant information-retrieval mechanisms. As is explained below in Section I.1.2, this Study is only one of a number of initiatives undertaken on behalf of the World Intellectual Property Organization (WIPO) by commissioned experts and it should not be considered in isolation from those initiatives. The conclusions of this Study may be stated as follows: - While there is a literature on the nature and the legal status of the public domain within intellectual property, it is mainly of recent origin and refers predominantly to issues relating to copyright. Since the role played by the public domain in the field of technological innovation is very different to the role played by the public domain within the sphere of copyright, this Study is therefore both timely and necessary and may be of assistance to those seeking to use its content as a basis for the further discussion and analysis of the many and complex issues raised in it; - There does not yet appear to be any literature which records that there exists a conclusively demonstrable causative link between access to patent public domain information and any form of inventiveness or creativity. However, it is reasonable to suppose that the provision of better means for identifying and accessing public domain information will confer a benefit on all sectors of the innovation community, if only by assisting in the elimination of previously fruitless attempts to solve technical problems and in the avoidance of duplication of research the results of which have already entered the public domain. Additional benefits may be assumed to exist by virtue of the potential which is contained with an accessible public domain for furnishing analogies in the resolution of technical difficulties which may be applied in later comparable situations; - Information which enters the public domain as a by-product of the patent system possesses a number of features which make it more readily identifiable and accessible than information at large. This is because: (i) documentation relating to such information is generally related to its subject matter by its being coded under the International Patent Classification scheme, (ii) legal rulings on the meaning and interpretation of contested patent documentation are increasingly reported and made publicly available on the internet, (iii) there is a legal requirement that the description of an invention in a patent application be of such a quality that it at least in theory enables an addressee who is skilled in the field of implementation of the invention to put it into use, and (iv) earlier patent documents can be identified in later documents in which they are cited by patent examiners in the course of examination of novelty and inventiveness, which enables members of the public more easily to link one invention with another; - There is an increasing awareness on the part of in particular developing countries, which may not have a long tradition of patent filing and documentation on which to draw, of the desirability of creating and maintaining a system for facilitating access to expired patents and other public domain materials; CDIP/4/3 Rev./STUDY/INF/2 page 3 - There is at present no international legal framework for cooperation in the development of the patent public domain as a resource in its own right. However, it is encouraging to note that patents are a field in which there is a strong tradition of cooperation between granting authorities at