A stitch in time saves nine – Publication of non-worked patents

Milind V Sathe

The topic is of great relevance to all categories of nations i.e. developed countries, developing countries (DCs) and least developed countries (LDCs) but of more importance to later two categories. Is subject population and industry in these countries aware of quantum and quality of non-worked patents? Are they aware of qualitative and financial implication of their unawareness? Is there any provision in their patent enactment that categorically prohibits IP wings or patent office (PO) from publishing list of non-worked patents? Can the law be interpreted to mean that publication of non-worked patents is expected from POs?

What is the utility, significance and relevance of publication of non-worked patents to the economy, industrial capabilities and materialistic achievements of these countries? Are prevailing provisions being effectively used? What more can be done so as to make better use of existing provisions to achieve objective of publication of non-worked patents?

Publication of details of non-worked patents

Although POs in all nations publish some details about patent applications and granted patents, they seldom publish the list of non worked patents. At least, date of the patent application, grant and number of years it is not worked after the grant should be published along with contact details of patentee.

Note that patent offices in developed world publish the data in a more user-friendly manner than POs in DCs and LDCs. The prosecution history is accessible on the net in developed world to an extent to which it is not accessible in DCs and LDCs. Besides these striking differences, efficiency and transparency is another issue that distinguishes developed world from DCs and LDCs.

Reasons for the difference is transparency, quality and quantity of data published

The striking difference as referred above indicates that a developed nation uses patent information better to boost their economy, to create new industries and provide certain and sure comfort to subject population. Whereas DCs and LDCs have uplifted their IP offices and infrastructure not by their internal drive but because of external thrust imposed by being signatory to TRIPs and other FTAs or bilateral agreements.

Forced transparency provided by DCs and LDCs is result of designing inadequate policies / systems and their lopsided implementation which do not benefit entities and the subject population of that country albeit it benefits the foreign patentees. To benefit domestic population and the industry, IP wings of the nation should publish such data that will clarify intellectual dilemma and guide domestic industry to gain an edge so as to lift their top lines, bottom lines, expand economy and provide comfort to consumers.

In knowledge economy (KE), IP wings have a major role to play in this regard in DCs and LDCs, than ever. IP wings should publish all such information which is not prohibited by international agreement and which will allow domestic industry or industrial activities run by foreign entrepreneurs in their land. This understanding is going to allow a sovereign to reign supreme within its territorial limits. One such neglected area is publication of non worked patents.

What are non-worked patents?

Albeit literal meaning of the phrase ‘non-worked patent’ would mean a patent that is not worked, this article presumes non-worked patents to be the patents that are not worked for the period of three years after the grant or for the period of four years after the application. Patents protecting trivial invention or those blocking competitors or those which protect practically useless invention are some of the categories of non-worked patents.

What is significance of publishing list of non-worked patents?

As per Pars convention which is internalised by TRIPs agreement, non-working of patent for a period of three years after the grant throws open the said patent for compulsory licensing (CL). Invoking CL is an internationally acknowledged authentic way of internalising protected non-worked technologies. Non-worked patents systematically kill competing technologies and ensure that competitive products are not provided to market. Non-worked patents are intellectual barriers in the development of industry, trade and distribution of wealth in DCs and LDCs which economies of these nations cannot afford. Non-worked patents are intentional negative acts of patentee or genuine cases of useless or neglected sparks of alleged intelligence or genuine cases of inability of the patentee to work the patent. Intentional non-working is anticompetitive and against the betterment of consumers, nation, economy and industry. Non-working of patent whether intentional or unintentional is cost to nation. As public pays the cost for enforcement of patents, patents must be worked.

However, if IP wings or POs of any nation are not taking steps to declare the non-worked patents or not providing the facility to allow patentee to declare his willingness to license the patent, then PO has lot of scope to improve its function to align to national priorities and interests of the domestic industry. PO can encourage individual patentee to license out his patent and allow good products to reach market by publishing the list of patents open for licensing.

No international agreement prohibits IP wings of any nation from publishing list of patents which are not worked in the country for the period of three years after the grant. How many nations are publishing it? Is your nation publishing it?

Utility and significance of publication of non-worked patents

Consenting to be a part of KE necessitates designing of concrete policies and their execution by signatories to ensure that industry realises the freedom of space to operate, as well as areas where their inherent freedom to operate is restricted. This restriction of freedom of operation is to be viewed as shrinking of domains. This shrinkage is more serious because some wings of apex institute, which are part of administrative machinery, propagate this shrinkage for some reasons may be unknowingly.

Publication of non-worked inventions enables various players, manufacturer companies in diverse industry segments to understand how they can make use of unused technology which may be more efficient and cost effective than the one used by them.

Similarly alternative/ versatile uses of the protected but unused technology provide potent possibility of supply of novel articles to provide consumer comfort.

Non-working of patents is primarily used as barrier by patentee to stop nation and its industry from producing either competitive products which may be better then or inferior to his products. Knowledge of non-worked patents avenues to augment industrial activity within the nation by legal and authentic means to use it by domestic industry to produce user friendly articles.

Publication of non-worked patents is a unashamed manifestation of political will and live sovereign. IP educated leadership can steer the nation in KE when IP based trade frame is bent on restricting sovereign domains. It is an indicator of ability of IP wings and legal ministry of the nation to construe international agreements in sane manner for the benefit of subject population. It demonstrates the sovereign’s concern for the domestic industry and its uninterrupted development and for the promise to provide better future to subjects. By publishing list of non-worked patents, sovereign fearlessly expresses his undisputable concern for the economy of the nation, its continuous efforts to get rid of the intellectual barriers diplomatically placed by international agreements.

It is a fearless expression of inherently capable nation to remain undeterred from external influences.

It opens avenues for fast internalisation of new technologies which positively impact consumption of scarce resources and ensure its prolonged use. It provides guidance for import substitution and helps nation to be more competitive in global trade.

It certainly augments licensing activity and aligns patentees to national priorities. It neutralises unilateral lopsided interpretation of IPR and patents in specific and propagates realistic version of IPR. It neutralises negative aspects of IPR.

Possible reasons for non publication and their hollow nature

1. Although clauses of international agreements adequately describe the objectives of IPR, these agreements do not specifically prescribe for publication of non-worked patents. It must be noted that these agreements do not specifically prohibit the publication of non-worked patents as well. On the contrary objectives and preamble of these agreements reinforce sovereign identity and measures taken by it to identify situations of emergency and provide freedom to define the same. Fact of protecting sovereign identities and their measures empower signatories to publish the list of non-worked patents.
2. Albeit signatories are free to publish the list of non-worked inventions, may be inadequate understanding of IPR and its potent canines capable of inflicting long lasting and at times irrecoverable damage to the economy and development of industry primarily in DCs and LDCs leads to apathetic administration and indifferent processing of IPR information such as patent applications, designing of rules to govern patents, publication of non-worked patents, use of user unfriendly packages by IP wings, publication of real time data giving patterns of monopolisation of industry and their classification into domestic and foreign patentees, prosecution history and other measures imparting transparency.
3. Inadequate trained and educated manpower resources.
4. Inadequate infrastructure.
5. Inability of the nation to prioritise administration of IP wings and provide financial resources due to pressing needs of other priorities.
6. Unconcerned or unorganised industry sector.
7. Industry associations prioritising other issues over pressing IP wings and apex institution for publication of non-worked patents.
8. Educational institutes imparting superficial education of IPR without giving deserving and due emphasis on origin, history and development of IPR and patent system in specific. Inability of the IPR teaching institutes to understand and align objectives of IPR and patent system with the nation and its priorities. This inability results into echoing those IPR versions which are propagated by developed world which is more concerned about protecting their economic interests than strengthening economies of their trade partner nations and hence industries therein.
9. Exclusion of introduction to IPR from the syllabus of high school and undergraduate college courses. Shortage of IPR educated teaching staff further complicates the problems by resorting to ready made IPR versions which are irrelevant for the nation.
10. Refer to the reasons sited by article published in Express Pharma, Thursday, 01 November 2012 titled ‘Non-working of patent a blot on knowledge economy.’

Besides these there are few other reasons which are more of macro nature and related inabilities of sovereign signatories to form a cohesive international to generate counter pressure and hence making them more vulnerable to remain intellectual slaves.