August 2009
IP & LAW
From the Editor
The Intellectual Property
Literature Watch contains a
selection of the most recent
working papers, published
reports, and books that are
relevant to the understanding
of intellectual property rights
(IPR) issues.
Alina Marinova, Editor
amarinova@lecg.com
Contact LECG
For more information on the
issues discussed in this
newsletter, please contact:
Anne Layne-Farrar
Chicago
ALayne@lecg.com
312.267.8243
balance of the direct costs of applying for a
Courts and the Patent System
Dan Burk and Mark Lemley
Regulation, Vol. 32, No. 2, pp. 18-23,
Summer 2009
(http://ssrn.com/abstract=1432452)
Innovation and patent law work differently in
different industries. To some degree, the
courts’ interpretations of patent and
trademark law accommodate those
differences. It is not much of an exaggeration
to say that the patent system must bend or
break: a patent system that is not flexible
enough to account for these industry
differences is unlikely to survive, let along
accomplish its stated goals. We believe the
system has the flexibility to do both, but this
will require the courts to better recognize and
use the policy levers they have been given.
Congestion Pricing for Patent
Applications
Alan Marco and James Prieger
Working Paper
(http://ssrn.com/abstract=1443470)
In this paper we study the main factors
determining the optimal level of intellectual
property (IP) protection. We are especially
interested in how optimal protection should
change as the size of the economy grows.
There is a large literature that explores the
qualitative aspects of optimal IP policy,
and a significant empirical literature that
attempts to measure such things as the
value of In recent years a great deal of
attention has been paid to patent reform.
This debate is exemplified by recent popular
publications (Jaffe and Lerner, 2004; Bessen
and Meurer, 2008), as well as publicized
patent litigation such as the NTP v.
Research-in-Motion patent litigation (the
Blackberry patents). At the same time,
scholars point to the over-burdened patent
offices, the growth in patent applications,
and the proliferation of low-quality or
overlapping patents. In this paper, we take a
novel approach to dealing with the flood of
applications at the patenting authorities in
the US and Europe and the resulting delay
and issuance of low quality patents. We
explore the magnitude of the congestion
externality and seek to determine the optimal
patent with the indirect cost caused by
regulatory delay. Our proposed theoretical
and empirical framework enable explicit
measurement of the cost of delay and the
implications of changing patent application
fees. The results have implications for a
variety of policy questions involving optimal
fees, patent quality, and competition policy.
We include in this submission a basic
theoretical model that can be extended to
examine a number of policy implications,
including the relationship between
examination time and patent quality. We also
describe an empirical approach that enables
quantification of the cost of delay. Both the
model and the empirical work enable us to
discuss additional policy questions such as
the importance of application versus renewal
fees, the consequence of the self-funding
constraint on patent offices, and the impact
of higher quality patents on rent-seeking
activities. Preliminary results show that the
patent office revenue maximizing fee
exceeds the optimal fee for patent holders,
but that the optimal fee for patent holders is
positive.
Patents as Administrative Acts:
Patent Decisions for Administrative
Review
Chris Dent
Sydney Law Review, Vol. 30, No. 4,
2008
(http://ssrn.com/abstract=1443566)
Currently, challenges to decisions in the
Australian patent system may be heard in
either the Patent Office, if the challenge
comes before the grant of the patent, or in
the Federal Court, if a granted patent is
challenged. This is the case despite the
grant decision being an administrative
decision. This Paper considers the decisions
made as part of the patent system - including
the decision by a patent examiner to grant a
patent and the adjudicatory decisions of
opposition and revocation - and explores the
potential for the challenges to the grant
decision to be subject to administrative
review. In particular, the Paper raises the
possibility of examiners’ decisions being
subject to merits review in the Administrative
Appeals Tribunal and judicial review before
the Federal Court.
Page 1 of 17
A Stone's Throw Away from a
European Patent Court: The
European Patent Litigation
Agreement
Stefan Luginbuehl
Working Paper
(http://ssrn.com/abstract=1403098)
The EPO Working Party on Litigation and its
sub-group have in the past three and a half
years elaborated a treaty text of an
agreement for a European Patent Litigation
System. The heart of this system includes a
European Patent Court. The agreement on
the cornerstones for a Community Patent
Court, and on the other points in regard to
the Community patent in the common
political approach of March 3, 2003,
questions the further necessity for a
European Patent Court. The author shows
why in any case a European Patent Court
would be needed.
An Empirical Analysis of the
Adjudication of Patent Cases by the
Court of Appeals for the Federal
Circuit
Manasseh Zechariah
Working Paper
(http://ssrn.com/abstract=1443575)
The enforcement of patent rights affects the
scope of the monopoly rights provided by
them and hence the incentives they provide.
Greater likelihood of a pro-patent decision by
the enforcement mechanism provides a
larger scope of monopoly rights. I investigate
the likelihood of a pro-patent decision by the
Court of Appeals for the Federal Circuit in
patent cases to see how it varies with
characteristics of the patent, the litigants and
the litigation itself. This model corrects for
the fact that not all patent cases get
appealed after trial by incorporating a
selection model for the appeal of cases. I
also incorporate the litigants' uncertainty
about appealing a case using
heteroscedastic selection model. I estimate
the model using simulated maximum
likelihood and use the GHK simulation
method. Results show that overall the Court
of Appeals for the Federal Circuit is an anti-
patent court. However, significant differences
exist between different classes of patents
with drug patents being more likely to be
decided pro-patent than software patents.
The Court of Appeals for the Federal Circuit
is found to defer to the decisions of the lower
court. We also see an increased likelihood of
a pro-patent decision by the appeals court
with an increase in the proportion of
republican judges on the bench.
Rational Competition Policy and
Reverse Payment Settlements in
Hatch-Waxman Patent Litigation
David Opderbeck
Working Paper
(http://ssrn.com/abstract=1440780)
This paper examines the problem of 'reverse
payment' settlements in patent litigation
under the Hatch-Waxman Act. A reverse
payment settlement involves a payment from
a branded pharmaceutical company to a
generic manufacturer, usually in return for
the generic manufacturer’s agreement to
delay market entry. Federal appellate courts,
regulatory agencies and commentators are
divided about the legality of such
agreements. This paper argues that the
importance of product market definition has
been overlooked in existing treatments of the
issue. The paper develops an empirically-
based 'Settlement Competition Index' that
could be used by courts and regulatory
agencies to evaluate reverse payment
settlements. A formula to calculate the
Settlement Competition Index is provided
and tested with hypothetical and real-world
examples.
The Levels of Abstraction Problem in
Patent Law
Tun-Jen Chiang
Working Paper
(http://ssrn.com/abstract=1434465)
The concept of “invention” is fundamental to
patent law. What the patentee creates as the
invention, he receives as his monopoly
reward. This quid pro quo suggests that
patent scope is self-defining: the patentee
a receives whatever invention he created, and
nothing else.
The quid pro quo framework breaks down,
however, because “invention” means
different things on the two sides of the
equation. The invention that the patentee
creates is an embodiment. The invention that
defines monopoly scope, however, is an
idea. Moreover, every patented embodiment
contains many ideas, at different levels of
Page 2 of 17
abstraction. Courts must choose one idea to
give legal protection, with important
consequences. The higher the level of
abstraction chosen, the more scope the
patentee receives, with attendant incentive
benefits and monopoly costs.
Courts that have treated idea and
embodiment as a unitary invention have
ignored the necessity of this choice,
effectively exercising their discretion
arbitrarily and silently. This Article argues
instead for a legal realist approach that
acknowledges discretion in determining
patent scope, discards the conflicting yet
absolutist rules governing this area, and
determines scope based on balancing
incentives and monopoly costs, with
transparent analysis allowing better
information to be collected and greater
predictability in outcomes.
Appellate Review of Patent Claim
Construction: Should the Federal
Circuit Be its Own Lexicographer In
Matters Related to The Seventh
Amendment?
Eileen Herlihy
Michigan Telecommunications and
Technology Law Review, Vol. 15,
p. 469, 2009
(http://ssrn.com/abstract=1437242)
This article addresses the need for a
principled standard of appellate review of
patent claim construction, emphasizing the
necessity for such a standard to be
compatible with Seventh Amendment law.
In Cybor Corp. v. FAS Technologies, Inc.,
the Federal Circuit resolved internal conflict
regarding the appropriate standard of
appellate review by establishing a de novo
standard and overruling its past inconsistent
precedent. The appropriateness of this de
novo standard of appellate review has
generated extensive debate and
disagreement within the judiciary, the patent
bar and academia. It has been over ten
years since a majority of the Federal Circuit
endorsed this standard of review, taking the
position that it was in line with the Supreme
Court's seminal Seventh Amendment
Markman case, which holds that judges,
rather than juries, should construe patent
claims. Over the years since the Federal
Circuit endorsed the de novo standard of
review, the dissenting voices on the Federal
Circuit have persisted and the number of
Federal Circuit judges who are on record as
indicating that the standard should be
revisited has steadily grown.
Part I of this Article examines whether the
Cybor rule of de novo appellate review of
patent claim construction is consistent with
Supreme Court precedent, focusing primarily
on Seventh Amendment decisions. Part II
discusses whether or not it is appropriate for
the Federal Circuit to set the boundary
between issues of fact and issues of law in
patent cases. Finally, Part III addresses the
extent to which various proposed standards
of appellate review of claim construction are
principled, with particular emphasis on their
compatibility with the Seventh Amendment.
Indeterminism and the Property-
Patent Equation
Alan James Devlin
Yale Law & Policy Review,
Forthcoming
(http://ssrn.com/abstract=1435902)
Fierce debate has raged over the relative
primacy of liability and property rules in
informing patent jurisprudence. Those who
favor the latter path often see prescriptive
parallels in the rules properly brought to bear
on owners of physical and intellectual
property. Others view the intellectual domain
as sufficiently distinct as to render the law of
tangible property incongruous and
inapplicable.
This Article seeks to promote a novel
perspective on this dialectic, by focusing on
the import of a heretofore unappreciated
tenet of the analogy between intellectual and
real property. Those who seek to inform the
optimal construction of patent rules through
long-established norms of property law face
a challenge in the form of the asymmetric
legal certainty that characterizes these
respective property rights. More specifically,
the validity of ownership rights in patented
technology is heavily stochastic, whereas
rights in physical property are largely
definite. The issue of certainty implicates
both the epistemological and consequential
qualities of ownership, and should inform the
optimal construction of property rights
accordingly. This holds especially true with
intellectual property, where exclusivity
comes at the cost of the Lockean 'enough
and as good' condition, given the public good
benefits foregone by private ownership.
Page 3 of 17
This insight begs two major conclusions.
First, there may be good normative ground
for tempering the exclusive rights properly
associated with highly probabilistic property
rights. Second, in an environment of free
contract, one should be concerned that a
patentee may be able to transform the
aoristic right granted it by Congress into a
certain one, thus deriving a greater
pecuniary return than was inherent in the
'patent bargain.' The legitimacy and scope of
the power to exclude lies at the heart of this
transformative process, creating a spectrum
that charts a direct association between
patent certainty and freedom of contract.
Indeterminism thus bears significant
repercussions for the property-patent
equation. This Article charts the positive
source of the divergence in determinism
between intellectual and tangible property,
and explores the normative repercussions of
that departure for the formulation of both
substantive patent law and ideal restraints
on freedom of contract. Interestingly, the
capricious nature of intellectual property
need not strip the property-patent equation
of all legitimacy. Nevertheless, the
temptation to borrow wholesale from the law
governing real property must be met with
sensitivity for the distinctions between the
property characteristics at issue. The Article
concludes by suggesting that improvements
in the prosecution and re-examination
processes would greatly strengthen the
property-patent equation. Until that time,
though, qualified limitations on the right to
exclude, and rights derived therefrom, may
be normatively justified.
The 'Process' of Patenting: Why
Should We Care About a Potential
U.S. Supreme Court Decision in Bilski
V. Doll?
Johanna Dennis
Computer Law & Security Review, Vol.
25, No. 6, 2009
(http://ssrn.com/abstract=1433847)
In Bilski v. Doll, the U.S. Supreme Court is
called to define one of the categories of
patent eligible subject matter, “process”
patents. In 2008, the Court of Appeals for the
Federal Circuit held that the category has a
narrow meaning, and that to be eligible for a
process patent under 35 U.S.C. § 101, the
invention must involve a machine or
apparatus or involve a transformation to a
different state or thing, ultimately rejecting
the patent application as unpatentable
subject matter. The patent applicants have
asked the U.S. Supreme Court to determine
two issues: first, the meaning of “process” in
35 U.S.C. § 101 and whether the lower court
properly relied on a “machine-or-
transformation” test, and second, the test’s
potential conflict with 35 U.S.C. § 273, which
provides protection for “method[s] of doing or
conducting business.” The Court’s decision
could change the way that research and
business are done, and patent protection for
such investments. Parts 1 and 2 of this
article address Bilski directly and what is and
is not in dispute. Part 3 addresses the
“machine-or-transformation” test, while Parts
4 and 5 address reasons not to adopt such a
test.
Why Weak Patents? Rational
Ignorance or Pro-'Customer' Tilt?
Zhen Lei and Brian Wright
Working Paper
(http://ssrn.com/abstract=1434275)
The United States Patent and Trademark
Office (USPTO) grants many weak patents
that would be ruled invalid if subjected to
more thorough scrutiny. Some observers see
weak patents as evidence of the need for
allocation of more resources to increase the
accuracy of patent examinations. Others
argue that the costs of such reform would
outweigh the benefits; weak patents reveal
the “rational ignorance” of the Patent Office;
it is optimal to leave examiners unequipped
to identify more weak applications, deferring
the large costs of more definitive
determination of validity until patents are
litigated. Here we address the assumption
underlying both positions: that examiners
cannot distinguish weak patents from strong.
We find that US examiners’ prior art
searches reveal that they can and do identify
many patents that are of dubious validity.
They conduct a more intensive search for
prior art for applications they accurately
identify as weak, because they bear the
burden of proof of non-patentability, but not
of patentability. Our study suggests that the
rules and procedures of the USPTO have
forced examiners to grant many of these
weak applications. Given the resources at
hand, examiners possess information about
the validity of their patents that society
Page 4 of 17
does not use. We do not find the balance of
the marginal costs and benefits of
information about patent validity that would
characterize rational ignorance at the
USPTO.
Intellectual Property Right Regimes,
Firms and the Commodification of
Knowledge
Benjamin Coriat and Oliver Weinstein
Working Paper
(http://ssrn.com/abstract=1440866)
The aim of this paper is to analyze the
evolution of the intellectual property regime,
and more precisely the patent regime, in the
USA, since the 19th century. To do so, we
shall consider intellectual property within the
context of general transformations in
capitalism, focusing on two main historical
phases. Firstly, the period covering the
formation and development of “corporate
capitalism” dominated by large corporations.
And then the new phase, which opened up in
the 1980s, marked by the rise to power of
finance. From a perspective of institutional
complementarities, we seek to show how the
characteristics and implications of IPR
regimes can only be understood in relation to
transformations in the main institutional
forms of capitalism: forms of the firm, the
status of labour (the 'wage-labour nexus'),
and market forms.
IP & LICENSING
Royalty Rate and Industry Structure:
Some Cross-Industry Evidence
Stephen Becker and Jiaging Lu
Working Paper
(http://ssrn.com/abstract=1447997)
This paper continues where Kemmerer and
Lu (2008) left off, and explores the
relationship between royalty rates and
market structure among industries.
Economists have studied innovation, R&D,
and market structure for decades, and also
have investigated patent licensing methods
across industries. However, there is very
little research on the relationships between
market structure and royalty rates. In this
paper, we first show that royalty rates are
positively associated with price markup, a
market power and market performance
measure, and then move to explore the
relationship between royalty rates and
market structure. Two complementary sets
of market structure factors are discussed.
The first one is technology intensiveness or
technology opportunity, on which we
demonstrate that technology intensive
sectors tend to have higher royalty rates
than other sectors. The second set covers
the traditional measures of barriers of entry.
Regression analysis reveal that royalty rates
exhibit a negative linear relationship with two
measures of barriers to entry, the ratio of
sales to capital invested and the ratio of
sales to operating costs. Finally, cluster
analysis is conducted to reveal group pattern
among the industries studied, using royalty
rate, markup, and the ratio of sales to capital
invested as variables. The analysis yields
four distinguishable groups of industries, and
the characteristics of each group are
discussed. Cluster analysis also
corroborates our conclusion that while both
traditional barriers of entry and technology
intensiveness contribute to determining
market power, one set of factors can exert
more dominant and pronounced impact than
the other one in a specific industry, as
evidenced by media and internet/software
sectors, in which market power is mainly
created by their technology and know-how
embedded in legally-protected IP.
Jostling for Advantage: Licensing and
Entry into Patent Portfolio Races
Ralph Siebert and G/ Von Graevenitz
Working Paper
(http://ssrn.com/abstract=1445304)
Complex high technology industries are
increasingly affected by patent thickets in
which firms’ patents mutually block the use
of important technologies. Firms facing
patent thickets patent intensively to acquire
bargaining chips and use licensing to ensure
freedom to operate. Such licensing allows
rivals to either avoid or resolve hold-up from
blocking patents. R&D incentives depend on
whether licensing takes place ex ante or ex
post. We model the choice between ex ante
licensing and entry into patent portfolio races
leading to ex post licensing. It is shown that
higher degrees of blocking lead firms to
license ex post while stronger product
market competition leads firms to license
Page 5 of 17
ex ante. Empirical results support these
theoretical predictions.
The Individual Inventor Motif in the
Age of the Patent Troll
Christopher Anthony Cotropia
Working Paper
(http://ssrn.com/abstract=1434921)
The individual inventor motif has been part of
American patent law since its inception. The
question is whether the recent patent troll
hunt has damaged the individual inventor's
image and, in turn, caused Congress, the
United States Patent and Trademark Office
(USPTO), and the courts to not be as
concerned with patent law's impact on the
small inventor. This Article explores whether
there has been an attitude change by looking
at various sources such as congressional
statements and testimony in discussions of
the recent proposed patent reform
legislation, the USPTO's response to
comments on two recently proposed sets of
patent rules, and recent Supreme Court
patent decisions. These sources indicate
that the rhetoric of the motif has remained
unchanged, but its substantive impact is
essentially nil. This investigation also
provides a broader insight into the various
governmental institutions' roles in patent law.
Dethroning Lear? Incentives to
Innovate After MedImmune
Rochelle Dreyfuss and Lawrence Pope
Berkley Technology Law Journal, Vol.
24, 2009.
(http://ssrn.com/abstract=1439884)
The Supreme Court’s 2007 decision in
MedImmune v. Genentech reversed prior
case law and allowed a licensee in good
standing to challenge the validity of the
licensed patent. In some ways, the decision
was unsurprising. It made patent law more
consistent with general rules on justiciability
and with the Court’s recent concerns about
the strength and prevalence of patents. Still,
the decision is, in significant ways,
astonishing. By apparently shifting all of the
risk of invalidation to patentees and putting
them into inferior bargaining positions
relative to licensees, it arguably undermines
patent value, reduces incentives to invest,
and endangers the public interest in scientific
progress. It is especially detrimental to
patent holders in emerging sectors, where
licensing income is key to funding research
and technology transfer operations. Yet,
there is virtually nothing in the opinion that
rationalizes the result in terms of innovation
policy.
This article suggests that this dire view of
MedImmune is wrong: that the decision
leaves patentees free to share the risks of
invalidation with their licensees, so long as
they do so expressly, thereby giving potential
licensees strong incentives to vet validity at
the start of a relationship - and early in the
life of the patent. After setting out the
arguments for reading MedImmune as
promoting private ordering, the article
discusses five general approaches to
contracting in its light. It concludes with a
look at the limits of party autonomy,
suggesting that MedImmune also casts
doubt on a line of cases upholding
agreements between branded
pharmaceutical companies and generic
manufacturers that eliminate competition in
the name of reducing litigation costs.
IP & INNOVATION
Demythologizing PHOSITA
Matthew Herder
Working Paper
(http://ssrn.com/abstract=1448087)
The Supreme Court of Canada recently took
occasion in the context of a pharmaceutical
“selection patent” case, Apotex. v. Sanofi-
Synhtelabo, to revise the doctrine of non-
obviousness. Although cognizant of changes
made to the same doctrine in the United
States and United Kingdom, a critical flaw in
how the doctrine is being applied that
appears peculiar to the Canadian context
escaped the Supreme Court’s attention.
Using content analysis methodology, this
paper shows that lower Canadian courts
frequently fail to adequately characterize the
“person having ordinary skill in the art”
(PHOSITA) for the purpose of the
obviousness inquiry. The paper argues,
moreover, that this surprisingly common
analytical mistake betrays a deep
misunderstanding of innovation, one which
assumes that actors consult patents to learn
about scientific developments, misconceives
the boundary between proprietary
Page 6 of 17
knowledge and non-proprietary knowledge
as static instead of dynamic, and ignores the
industry-specific nature of innovation. The
paper also offers a historical account of the
evolution of the non-obviousness test,
identifies several factors that undermine
PHOSITA’s characterization, and develops a
multi-layered prescription to remedy the
problem. In sum, unless the judiciary begins
to demythologize PHOSITA by making
findings of fact in each case where
obviousness is at issue, the current chasm
between patent law doctrine and the goal of
facilitating innovation will only widen.
Is the Use of Patents Promoting the
Creation of New Types of Securities?
Stefania Fusco
Santa Clara Computer and High
Technology Law Journal, Vol. 25, No. 2,
2009
(http://ssrn.com/abstract=1446806)
Has there been a change in the level of
innovation of financial methods subsequent
to the State Street decision that allowed the
award of patents to protect such methods?
Ten years following the issuance of State
Street, the patentability of business methods
is still so controversial that the Federal
Circuit has recently considered overruling its
own precedent by rehearing In re Bilski en
banc. The goal of the patent system is to
promote innovation. If an increase in the
level of innovation of financial methods is not
present, the adoption of this form of
intellectual property to protect creativity in
the industry is unjustified and, potentially,
even harmful. Indeed, it is important to
ascertain the correct balance between
encouraging innovation on the one hand,
and leaving enough “raw material” upon
which individuals can build new ideas on the
other. A first step in accomplishing this
objective is to understand whether the patent
system is “doing its job” or, in other words,
whether the provided protection is actually
inducing innovation in a specific industry.
In this article, the author presents an
empirical study of innovative types of
securities that have emerged over the past
25 years. The author also investigates the
patent practice of the financial industry and
identifies the patent applications submitted
and the patents issued on different types of
securities. Finally, the author discusses her
findings and concludes that, recently,
creators of new types of securities have
shown less interest in the patent system.
Nevertheless, the rate of innovation in this
field has remained constant. At this time, the
available data are not sufficient to reach an
entirely conclusive determination with
respect to whether the patent system has
affected the design of new types of
securities. However, the results are still of
great significance and cast doubts on the
soundness of the State Street decision, at
least to the extent that it involves the
financial industry. By deciding In re Bilski,
the Federal Circuit now has the opportunity
to readdress the issue of the patentability of
this subject matter in a way that more closely
reflects the goal of the patent system as it is
described in the Constitution.
Did Trips Spur Innovation? An
Empirical Analysis of Patent
Duration and Incentives to Innovate
David Abrams
Working Paper
(http://ssrn.com/abstract=1443412)
How to structure IP laws in order to
maximize social welfare by striking the right
balance between incentives to innovate and
access to innovation is an empirical
question. It is a challenging one to answer,
both because innovation is difficult to value
and changes in IP protection are rare. The
1995 TRIPS agreement provides a unique
opportunity to learn about this question for
two reasons. First, the adoption of the
agreement was uncertain until shortly before
adoption, making it a plausibly exogenous
change to patent duration. Second, the
nature of the law change meant that the
patent duration change was heterogeneous
across patent classes. Using both patent
counts and citation-weighted counts, I am
able to take advantage of the TRIPS-induced
law change to empirically estimate the
impact of patent duration on innovation. I find
evidence for an increase in innovation due to
patent term extension following TRIPS. Both
patent counts and citation-weighted counts
increased more following TRIPS in those
classes that received greater expected term
extensions relative to classes receiving
shorter extensions. While the precise
calibration of innovation valuation is difficult,
this paper provides the first attempt to
empirically estimate its response to a major
Page 7 of 17
change to patent duration, from the TRIPS
agreement.
Patent Policy, Patent Pools, and the
Accumulation of Claims in Sequential
Innovation
Gaston Llanes and Stefano Trento
Working Paper
(http://ssrn.com/abstract=1439752)
We present a dynamic model where the
accumulation of patents generates an
increasing number of claims on sequential
innovation. We study the equilibrium
innovation activity under three regimes:
patents, no-patents and patent pools. Patent
pools increase the probability of innovation
with respect to patents, but we also find that:
(1) their outcome can be replicated by a
licensing scheme in which innovators sell
complete patent rights, and (2) they are
dynamically unstable. We find that none of
the above regimes can reach the first or
second best. Finally, we consider patents of
finite duration and determine the optimal
patent length.
IP & COPYRIGHT
ISP Indirect Copyright Liability
Regime: An Economic Efficient
Liability Regime for Online
Copyright Protection Shaped by
Internet Technology
Weixiao Wei
23rd BILETA Annual Conference,
March 2008
(http://ssrn.com/abstract=1398323)
ISPs’ indirect copyright liability permits
regulation where traditional legislation fails to
meet requirements of copyright protection in
a new digital environment, and makes a third
party possibly to prevent or decrease the risk
of copyright infringement at low cost.
However, though it has been hailed as a
forceful tool for governing ISPs’ liability for
fierce copyright infringement committed by
their users over the Internet in most of the
jurisdictions, the strength of this liability
regime is still being challenged. Some
argued that imposing indirect liability on the
ISPs may lead to ISPs’ over-zealous
censorship and thereby decrease or limit
free access to copyright materials.
Meanwhile, the ISPs also argued that it is
unfair for them to bear the full social costs
generated by their users’ unlawful activities,
merely because they are providing facilities
and services. So far, dozens of studies have
been produced to criticise those arguments
and justify ISPs’ indirect copyright liability
from legal point of view; however, less
attention has been paid to the economic
implication of ISPs’ indirect copyright liability
and the significance it achieves at the
confluence of law and economics.
Utilizing an evaluation criterion: economic
efficiency-Hicks-Kaldor criterion and a simple
economic model: cost-benefit analysis, both
are drawn from the theory of economics, this
paper examines economic strength of
indirect liability regime in the context of ISPs’
liability for online copyright infringement. It
employs a string of relevant cases against
those who allegedly facilitate copyright
infringements to compare the costs and
benefits of ISPs’ indirect copyright liability
and also three applications of it including
vicarious liability, contributory liability and
inducement liability. The paper finally
concludes that only ISPs’ indirect copyright
liability regime shaped by the technology
through the development of the Internet is
the most efficient liability regime to tackle
extensive online copyright infringements and
bring long term social welfare to the society.
The Ethical Visions of Copyright Law
James Grimmelmann
77 Fordham Law Review 2005 (2009)
(http://ssrn.com/abstract=1388844)
This symposium essay explores the
imagined ethics of copyright: the ethical
stories that people tell to justify, make sense
of, and challenge copyright law. Such ethical
visions are everywhere in intellectual
property discourse, and legal scholarship
ought to pay more attention to them. The
essay focuses on a deontic vision of
reciprocity in the author-audience
relationship, a set of linked claims that
authors and audiences ought to respect
each other and express this respect through
voluntary transactions.
Versions of this default ethical vision animate
groups as seemingly antagonistic as the
music industry, file sharers, free software
Page 8 of 17
advocates, and Creative Commons.
"Respect copyrights," "Don't sue your
customers," "Software should be free," and "I
love to share" are all ethical claims about
copyright that share some common
intuitions, even as they draw very different
conclusions. The essay provides a
framework for thinking about these ethical
visions of intellectual property and then puts
these various visions into conversation with
each other.
A Tale of (at Least) Two Authors:
Focusing Copyright Law on Process
Over Product
Laura Heymann
Journal of Corporation Law,
Forthcoming
(http://ssrn.com/abstract=1442074)
U.S. copyright law accords its bundle of
rights to the author of the work. But despite
the centrality of this figure in the Copyright
Act, the statute doesn’t define the term, and
commentators have yet to agree on precisely
what characteristics this creature should
have. As history and scholarship show, an
author can take on many different personas,
she can be individual or corporate; she can
be someone who creates deliberately or
accidentally; and she can work separately or
in collaboration with others. Far more
attention has been paid to this individual’s
creative output: works of authorship. Works
of authorship are the creations to which
rights attach, and so discovering the
substance and boundaries of such works is
often the first step in any copyright analysis.
As a result, in U.S. copyright law, the author
is defined more by what she creates, a
copyrightable work, than by why she creates.
This result seems odd, because U.S.
copyright law is typically explained as
affording authors economic incentives to
create so that the public benefits from the
development of new works. An author will be
reluctant to create and commercialize her
work if a second-comer can simply copy that
work and sell it so as to recoup her cost of
copying, far more cheaply than the author
herself, who must also recoup the cost of
production. This explanation assumes,
however, that authors create in response to
economic incentives. While this may be true
for some authors and for some forms of
expression, it is unquestionably not true for
others. Copyright law itself, however,
remains fairly agnostic in this debate.
Despite the varying interests and incentives
that motivate authors to create, copyright law
gives all authors exactly the same bundle of
rights. Although the term of those rights
differs depending on whether the author is
corporate or individual, and although an
employer can acquire rights in a work
without having actually created the work
(through the work-for-hire doctrine), both the
individual and the corporate author hold the
same rights to prevent certain unauthorized
uses of the work. Copyright law makes no
attempt to match the rights it grants to the
needs of the party to whom it grants those
rights, resulting in too much protection in
some instances and not enough in others. It
seems particularly unbalanced to engage in
a multifactor, nuanced analysis of the
defendant’s use and then to compare it to a
monolithic right on the plaintiff’s side of the
equation.
Copyright law might, therefore, better
accomplish its goals if it took better account
of the activities and interests of authors
rather than focusing on the products of their
creativity. Different types of authors engage
in different modes of creation and therefore
have different interests in controlling the
results of their work. The goal of this Article
is to consider whether copyright law would
be improved by recognizing this perspective.
Copyright Law as Mediational
Means: Report on a Mixed Methods
Study of U.S. Professional Writers
Martine Courant Rife
Working Paper
(http://ssrn.com/abstract=1434247)
This article reports on an empirical study
conducted among US professional writers
composing in digital writing environments.
The study explored US copyright law’s
mediational influence on digital composing
using a sequential transformative mixed
methods research design. A digital survey
(N=334) was administered to a randomly
selected population of students and teachers
in US technical and professional writing
programs and interviews were conducted
with select writers as well. The study
examined three main areas of inquiry: 1) the
status of knowledge and understanding of
copyright law in the field of technical and
professional writing; 2) the creative thinking
processes, or rhetorical invention, of writers
Page 9 of 17
in these programs composing webtexts in
light of copyright law; and 3) what happens
to mediational means as writers leverage
them in digital contexts. In this article the
study’s six major findings and seven granular
findings as well as implications are briefly
summarized and discussed. The study
hopes to provide a baseline that might be
used for further research in cross-cultural or
international contexts.
Copyright Law of the European
Union
Arun Krishnan
Working Paper
(http://ssrn.com/abstract=1442484)
Neither the Current EC Directives nor TRIPS
make significant legal adjustments to cater
for digitised information systems serving
world networks, for information
superhighways are too novel and shifting a
phenomenon. The implications for Copyright,
as the most likely tool for shoring up their
economic value, are of course, under urgent
scrutiny. Whatever else, the provision of on-
line services for education, information,
entertainment, business and Government
promises very considerable realignments in
what may be loosely labeled the information
industry. In conditions of such insecurity, it
seems highly important at least to ensure, if
possible, that creators and other providers
can secure returns on the users of their
material which correspond to the sale of
copies and the showing of material in
cinemas and on television in the world to
date. There are considerable hopes and
considerable dangers in a digitised world.
Authors, and the creative works that they
develop, will ultimately determine whether
new digital networks and the global
information society succeed or fail. People
simply will not take part in the new digital
networks if the content available is not
sufficiently interesting, creative or useful.
Maintaining strong copyright protections for
authors of every kind of creative work is
necessary to ensure that these authors have
adequate, market-driven incentives and
rewards to create such content and to make
it available to the public in these new ways.
The Berne Protocol offers thoughtful and
sensitive solutions to the challenges
presented by the global Information society -
particularly as to the issues of computer
programs, temporary copying and use,
distribution, digital transmissions and
technical protections - while maintaining the
maximum opportunity for the quality and
quantity of content to grow in the new, digital
environment. A successful negotiation of the
Protocol will indeed help to make new laws
in the digital copyright era.
Inadvertent File Sharing Over Peer-
to-Peer Networks: How it Endangers
Citizens and Jeopardizes National
Security, Testimony Before the U.S.
House Committee on Oversight and
Government Reform
Thomas Sydnor
The Progress & Freedom Foundation
U.S. Congressional Testimony, 2009
(http://ssrn.com/abstract=1443289)
Certain distributors of popular file-sharing
programs have repeatedly failed to prevent,
and may have knowingly caused and
perpetuated, inadvertent file-sharing,
Inadvertent sharing cannot be remediated by
self-regulation by distributors of file-sharing
programs because certain distributors have
repeatedly violated every set of self-
regulations proposed - including a Code of
Conduct and a set of Volutary Best Practices
that they drafted.
Three critical defects are present in every
released version of the LimeWire 5 file-
sharing program: (1) every version is
dangerously unpredictable and can share all
of a user's personal document, image, video,
and audio files just by being installed, (2)
every version violates critical provisions of
the LimeWire's own Voluntary Best
Practices, (3) every version contains a
feature that LimeWire itself knew to be a
needlessly dangerous of means of ensuring
that one reasonable mistake by a child could
inadvertently share thousands of a family's
most sensitive personal files.
In short, the problem of inadvertent sharing
has persisted for nine years because
distributors of file-sharing programs like
LimeWire LLC have repeatedly responded to
even the most serious and well-documented
concerns about inadvertent sharing with half-
measures, misrepresentations, whitewash,
and other conduct that, considered in its
entirety, could strongly suggest bad faith - an
intent to cause and perpetuate inadvertent
sharing. Consequently, the widespread, well-
documented breaches of national, military,
Page 10 of 17
corporate, and family security caused by
inadvertent sharing may be nothing more - or
less - than the acceptable 'collateral damage'
of schemes intended to trick users into
sharing popular music and movies.
Congress should pursue a two-pronged
remedial strategy. First, this issue should be
formally referred to law-enforcement
agencies possessing relevant civil and
criminal enforcement authority. And
Congress should support efforts to amend
H.R. 1319, The Informed P2P User Act, in
order to grant the Federal Trade
Commission additional targeted enforcement
powers.
Copyright as an Incentive for Musical
Creation: An Examination of the
Effects of Copyright Law Changes On
Registrations, 1978-2006
Katherine Hill
Working Paper
(http://ssrn.com/abstract=1444452)
This paper examines the effect of changes in
United States copyright legislation on the
quantity of musical copyright registrations
between the years 1978-2006. The
legislative amendments examined herein
are: (1) the Bern Convention Implementation
Act of 1988, (2) the Uruguay Round
Agreements Act of 1994, (3) the Sonny Bono
Copyright Term Extension Act of 1998, (4)
the Digital Millennium Copyright Act also of
1998, and (5) the Family Entertainment and
Copyright Act of 2005. The author
manipulated Library of Congress data in
order to carry out said analysis, since no
prior data set of musical copyright
registrations had been previously compiled.
Although federal copyright legislation
regulates all cultural industries, the
properties of musical compositions are
sharply distinct from those of the literary
works upon which copyright legislation was
crafted. Additionally, music has undergone a
drastic evolution with respect to its primary
methods of consumption since the
establishment of U.S. copyright legislation in
1790. These facts warrant analysis of the
efficacy of copyright legislation specifically
as an incentive for musical creation. This
paper finds significant evidence that the
Sonny Bono and Digital Millennium Acts, and
the Family and Entertainment Act all provide
statistically significant positive incentive for
the creation of musical works. This paper
further establishes that the above
amendments exert a greater influence on the
magnitude of monthly musical copyright
registrations by the Big Four record labels
than other musical copyright owners.
The Tangled Web of UGC: Making
Copyright Sense of User-Generated
Content
Daniel J. Gervais
Vanderbilt Journal of Entertainment
and Technology Law, Vol. 11, No. 4, pp.
841-870, 2009
(http://ssrn.com/abstract=1444513)
Even as a mere conceptual cloud, the term
“user-generated content” is useful to discuss
the societal shifts in content creation brought
about by the participative Web and perhaps
best epitomized by the remix phenomenon.
This Essay considers the copyright aspects
of UGC. On the one hand, the production of
UGC may involve both the right of
reproduction and the right of adaptation - the
right to prepare derivative works. On the
other hand, defenses against claims of
infringement of these rights typically rely on
(transformative) fair use or the fact that an
insubstantial amount (such as a quote) of the
preexisting work was used. One might also
rely on another type of fair use defense - for
example, that the second work was used in
news reporting, or, although the case law on
this point is still controversial, that the
reproduction was fair use because it made
the work more accessible. While it is clear
that creating original content by reusing
preexisting content is nothing new, the focus
here is on amateur creation and reuse and
the Essay discusses whether the amateur
nature of the content constitutes a new
normative vector. The Essay suggests that
the first step to find adequate answers is a
proper taxonomy of UGC.
Law and Innovation in Copyright
Industries
Matthew J. Baker and Brendan
Cunningham
Review of Economic Research on
Copyright Issues, Vol. 6, No. 1, pp. 61-
82, 2009
(http://ssrn.com/abstract=1436160)
Page 11 of 17
The impact of copyright law on innovation is
a topic of much debate. We use quarterly
data on aggregate copyright applications in
both the U.S. and Canada to estimate an
empirical model of copyright applications.
We measure changes in the breadth of
copyright protection by tabulating outcomes
of important court cases and new statutes
pertaining to copyright protection. We find
that the flow of applications exhibits a small
but significant positive response to court
decisions broadening copyright protection.
We also find that applications: 1) respond
negatively to increases in registration fees 2)
move counter-cyclically 3) have a strong
seasonal component and 4) may increase as
computing technology becomes more widely
available.
Copyright Implications of the
Convergence of Telecommunication,
Broadcasting & Information
Technology - Lesson for India
Tabrez Ahmad
Proceedings of the SPCI 08
International Conference of Cyberlaw,
2008
(http://ssrn.com/abstract=1440644)
The paper identifies copyright implications of
convergence in India, examining especially
how Indian law is approaching convergence
of telecommunication, broadcasting and
information technology issues. The delicate
balance of rights and obligations of
intermediaries of Internet such as copyright
owners, domain name holders, consumers,
netizens and internet service providers can
be upset when trying to keep the legal
developments abreast with the technological
advances. As more and more digital
products in network environment are
emerging efficient management and
controlled distribution of such products have
become one of the important considerations,
in an unprecedented way. The copyright
owners are under a constant threat of
loosing control over their products on the
information superhighway and are
experimenting various technological adjuncts
to retain control. Differences in rules are
beginning to be questioned. Now legal
regulation is a great challenge before the
world because the way legal and regulatory
reforms are carried out will eventually
determine the manner in which convergence
affects our lives. The converging
technologies raise several core issues such
as telecom sector is concerned with
infrastructure regulation and access issues;
broadcasting industry is more worried with
access and content issues; information
technology is trying to deal with contribute
with new regulatory issues of framing, hyper
linking, deep-linking, inlining, fixation,
communication, publication, parallel imports,
rights management information, allocation of
frequency spectrum, fair dealing, implied
license, liability of Internet Service Providers
(ISP), and jurisdiction etc.
This paper in particular questions the
regulatory framework for the
telecommunications, broadcasting and
information technology sectors in a
convergence environment, and taking in to
account relevance and need to safeguard
the public interest.
The Google Book Settlement and the
Fair Use Counterfactual
Matthew Sag
Working Paper
(http://ssrn.com/abstract=1437812)
This Article compares the Google Book
Search Settlement to the most likely
outcome of the litigation the settlement
resolves. It argues that Google was never
likely to receive the courts unqualified
approval for its massive digitization effort
and that the most likely outcome of the
litigation was that book digitization would
qualify as a fair use subject to an opt-out.
Accordingly, the aspects of the proposed
settlement which allow Google to continue to
operate its book search engine in its current
form should not be controversial; they
essentially mirror the court’s most likely fair
use ruling if the case had gone to trial. In
effect, the opt-out that fair use would likely
have required has been replaced by the
ability of copyright owners to opt out of the
class-action settlement.
In the wake of the proposed Settlement, the
Google Book debate has shifted away from
the merits of book digitization, and refocused
on questions of commoditization and control.
This Article highlights four critical areas in
which the Settlement differs sharply from the
predicted fair use ruling. First, the Settlement
permits Google to engage in a significant
range of uses including the complete
electronic distribution of books that go well
Page 12 of 17
beyond fair use. Second, the Settlement
provides for initial cash payments by Google
to the copyright owners and a fairly generous
revenue sharing agreement, neither of which
would have been required under a fair use
ruling. Third, the agreement creates a new
set of institutional arrangements that will
govern the relationship between Google and
the copyright owners covered by the
Settlement. The foundations of this new
institutional framework are the Settlement
agreement itself, the creation of a collective
rights management organization called the
“Book Rights Registry” and the “Author
Publisher Procedures”. The fourth area in
which the Settlement differs from the likely
fair use outcome relates to the accessibility,
commoditization and control of orphan
works.
Costly Screens, Value Asymmetries,
and the Creation of Intellectual
Property
Jonathan S. Masur and David Fagundes
Working Paper
(http://ssrn.com/abstract=1441987)
Copyrights arise the moment an author fixes
a work in a tangible medium of expression,
costlessly and immediately. Patents, by
contrast, arise only after an applicant
successfully navigates a cumbersome
examination process. Numerous writers
have critiqued the resulting proliferation of
copyrights as excessive, in some cases
arguing for more formalities in order to
restrict the ease of copyright vesting. The
patent examination process has drawn
criticism as costly and ineffective — in
contrast to copyright, too laden with
formalities. In this paper, we focus on
process costs (or lack thereof) to show that
these very different means for acquiring
intellectual property rights may be more
optimal than is generally believed. The high
costs of navigating the examination process
deter would-be patentees who expect their
property rights to generate only low private
value. Moreover, due to an important
asymmetry among the social and private
value of patents, the costly screen is likely to
select against socially harmful patents in
disproportionately high numbers. The
examination system thus eliminates patents
that create low social value while creating no
risk of eliminating patents that generate high
social value. Copyright is characterized by
just the opposite asymmetries. Because
there are numerous works that generate high
social value but low private value, the impact
of costly screens would be to preclude the
production of many of the publicly beneficial
works that copyright is designed to create. In
addition to providing a positivist explanation
for why the patent and copyright systems
differ, this application of costly screen theory
also points in the direction of what we call a
unified theory of IP process. This theory
illuminates the essential connection between
the statutory construction of exclusive rights
in information and the particular processes
by which those rights vest.
Should Different Information
Economies Have the Same Duration
of Copyright?
Michael Yuan
Review of Economic Research on
Copyright Issues, Vol. 6, No. 1, pp. 61-
82, 2009
(http://ssrn.com/abstract=1436157)
Copyright has been increasingly
internationalized and, recently, more and
more harmonized. However, there has been
little theoretical study of international
copyright. This paper develops and analyzes
a non-cooperative two-country model of
copyright, where two countries trade in
information goods and each with an open
and competitive information goods industry
sets copyright policy to pursue self-national
interest. The model suggests that an
increase in demand for information goods in
a country calls for longer copyright protection
in this country and shorter protection in its
trading partner; decreases in fixed or per-
product creative costs in a country with lower
such costs call for marginally shorter
protection; and an improvement in the
economies of creative scale in a country with
better economies of creative scale calls for
marginally longer protection. Understanding
these rational responses of nations to
changes in creative technologies and
markets should be helpful for international
copyright-policy making.
Page 13 of 17
 to public health. These risks were addressed
through negotiation of the Doha Declaration
IP & DEVELOPMENT on the TRIPS Agreement and Public Health,
the Article 31bis amendment and the WHO
Global Strategy and Plan of Action on Public
Health, Innovation and Intellectual Property.
Innovation and Technology Transfer The “Doha Declaration process” broadly
to Address Climate Change: Lessons speaking has resulted in some positive
from the Global Debate on movement.
Intellectual Property and Public
Climate Change, Technology
Health
Transfer and Intellectual Property
Frederick Abbott
Rights
ICTSD Programme on IPRs and
Krishna Ravi Srinivas
Sustainable Development, Issue Paper
Working Paper
No. 24, 2009
(http://ssrn.com/abstract=1440742)
(http://ssrn.com/abstract=1433579) Technology development and transfer has
This paper examines issues surrounding the
been identified as a key element in the Bali
development and transfer of technologies for
Action Plan. In the negotiations on a global
addressing the problem of climate change
climate treaty the developing nations have
based on the experience of developing
put forth ideas and plans to ensure that
countries in addressing problems of
intellectual property rights (IPRs) do not
innovation and access in the field of
become a barrier to transfer of climate
medicines.
friendly technology. In this discussion paper,
It looks at alternative energy resources
this question of technology transfer,
(AERs) and climate change mitigation
intellectual property rights is addressed in
technologies (MTs), at the forms of
the context of climate change. Patent
intellectual property rights (IPRs) used to
statistics shows the dominance of developed
promote and protect innovation, and at the
countries in specific technologies. The
ways these IPRs may have different effects
analysis on specific technologies indicates
and implications for AERs/MTs as compared
that IPRs is an important issue in
with pharmaceutical technologies. It is
development and transfer of technology and
generally assumed that the originator
it is a barrier. Data indicates that although
pharmaceutical sector is highly dependent
developing countries have made some
on strong patent protection, mainly because
progress, the dominance of developed
of the high cost involved in developing novel
countries in terms of patents, royalty and
drug therapies and the low cost of reverse
licensing income and expenditure on
engineering these new drugs. Preliminary
Research and Development remains as
research suggests that most AERs/MTs
before. The historical experience is that
industries may be less dependent on strong
stronger IPRs do not always result in more
patent protection, and/or that patents are
technology transfer and technology
less likely to cause signifi cant bottlenecks in
absorption. Hence the argument that
the development and transfer of AERs/MTs.
developing countries should provide stronger
While it is premature to come to a defi nitive
protection of IPRs to encourage technology
conclusion because researchers are only
transfer has to be challenged. The
now focusing on the evidence, there is some
technology transfer under UNFCCC and
basis for anticipating that IPRs will present
Kyoto Protocol has been minimal and
fewer risks for developing countries in the
insufficient to meet the needs of developing
context of climate change than for public
countries. The harmonization of IPRs
health.
through TRIPS has limited the options of
Developing country negotiators understood
countries to use compulsory licensing and
that the GATT Uruguay Round negotiations
competition policy. TRIPS has not facilitated
on trade related aspects of intellectual
technology transfer, particularly to Least
property rights would affect access to
Developed Countries (LDCs) and the North-
medicines. The resulting WTO TRIPS
South divide on this issue has resulted in a
Agreement did, in fact, present serious risks
stalemate. Under these circumstances it is
Page 14 of 17
futile to expect that TRIPS alone will result in
more transfer of climate-friendly
technologies. Using Common But
Differentiated Responsibility principle in
technology development and transfer is
desirable. Many proposals and suggestions
have been made to stimulate technology
development and transfer. Montreal Protocol
is a successful example that is relevant in
the context of climate change. The proposals
including the proposals made by developing
countries deserve a serious consideration
and innovative solutions have to be found.
Humanity does not have the luxury of finding
solutions over a century to solve problems
created by global climate change.
Developing countries need both
development and access to technologies
that will facilitate the transition to less carbon
intensive economy within the next two or
three decades. So it is essential that IP
issues do not become a barrier in this
transition. The challenge of climate change
calls for out of the box thinking to find
solutions that can make a difference. The
IPR issues in technology transfer need to be
tackled by a combination of policy measures,
incentives and bringing in changes at the
global IP regime under TRIPS.
Making WTO Reform Work for
Developing Countries: Improving
How the WTO’s Functions are
Governed
Carolyn L Deere
REDESIGNING THE WORLD
TRADE ORGANIZATION FOR THE
TWENTY-FIRST CENTURY, D.
Steger, ed., Wilfred Laurier University
Press, 2009
(http://ssrn.com/abstract=1436593)
The debate on the institutional reform and
governance of the WTO has now been
underway for over fifteen years. In the
context of a Doha Round of multilateral trade
negotiations stumbling forward in fits and
starts, the most prominent focus of
discussions of WTO reform has been options
for improving the process of the WTO
negotiation process. Throughout the past ten
years, however, there have also been a
number of broader debates about the
governance of the multilateral trading system
and calls for institutional reform at the WTO.
Most recently, the onset of global financial
crisis in 2008 reignited more wide-ranging
interest in the role of the WTO in global
economic management, prompting calls for
the WTO to do more to sustain a global open
trading system, and in particular to take
greater leadership on issues of trade
finance, aid for trade, and surveillance of
protectionist measures. Amidst a growing
body of scholarly literature and policy
commentary on the governance and
institutional reform of the WTO, this chapter
proposes a distinctive approach.
The Regulation of Creativity Under
the WIPO Internet Treaties
Ruth Okediji
Working Paper
(http://ssrn.com/abstract=1433848)
The WIPO Copyright Treaty and the WIPO
Performances and Phonograms Treaty
(WIPO Internet Treaties) recite a need for a
digital copyright framework to facilitate
'adequate solutions to questions raised by
new economic, social, cultural and
technological developments.' It can hardly be
contested that the social and cultural
developments to which the Treaties refer do
not derive from the cultural or economic
conditions (much less technological
developments) of the developing and least-
developed countries. Consistent with their
predecessors, the WIPO Internet Treaties
marginalize collaborative forms of creative
engagement with which citizens in the global
South have long identified and continue in
the tradition of assuming that copyright’s
most enduring cannons are culturally neutral.
Recently, however, the rise of Web 2.0 and
the salience of new forms of creativity
mediated by digital technologies and social
networking sites have exposed structural
tensions in copyright laws of OECD
countries similar to those which developing
countries have historically raised in
opposition to the Berne Convention. This
Essay reviews the evolution of the WIPO
Internet Treaties and argues that the
framework established just over a decade
ago is increasingly less relevant in
addressing the challenges of creativity in the
digital age. The Treaties do not provide a
meaningful basis for a harmonized approach
to encourage new creative forms in much the
same way the Berne Convention fell short of
embracing diversity in patterns and modes of
authorial expression. The growing social
Page 15 of 17
and legal recognition of new forms of
creativity enabled through digital
technologies offers an important opportunity
to challenge anew claims that globally
mandated copyright norms can effect
incentives to create that are relevant across
geographical, cultural and technological
boundaries.
TRIPS and Essential Medicines: Must
One Size Fit All? Making the WTO
Responsive to the Global Health
Crisis
Rochelle Dreyfuss
INCENTIVES FOR GLOBAL HEALTH:
PATENT LAW AND ACCESS TO
ESSENTIAL MEDICINES, Thomas
Pogge, Matthew Rimmer, Kim
Rubenstein, eds. Cambridge University
Press, 2010
(http://ssrn.com/abstract=1443248)
This paper was written as the introductory
chapter to Incentives for Global Health:
Patent Law and Access to Essential
Medicines, edited by Thomas Pogge,
Matthew Rimmer, and Kim Rubenstein
(Cambridge University Press). It challenges
the critique of the TRIPS Agreement as a
one-size-fits-all regime. To be sure, there are
WTO members who prefer to think of the
Agreement that way. However, the paper
demonstrates how the flexibilities built into
the TRIPS Agreement allow a state to
fashion local law to deal with its population’s
health needs. TRIPS accommodations are
not perfect: the second part of the paper
considers the roles that other international
organizations, such as WHO, and other
international obligations, such as human
rights agreements, can be used to influence
the development and interpretation of
international intellectual property law.
Consensus-Seeking, Distrust, and
Rhetorical Entrapment: The WTO
Decision on Access to Medicines
Jean-Frédéric Morin and E. Richard
Gold
Working Paper
(http://ssrn.com/abstract=1435747)
While the WTO secretariat, key delegations,
several NGOs, and industry publicly present
the August 30th 2003 WTO decision as an
attempt to reconcile intellectual property with
access to medicines, our research shows
otherwise. We draw on qualitative analyses
of 54 interviews and a lexicometric analysis
of press releases to show that their
enthusiastic public statements contrast
deeply with their internal, cynical beliefs.
Most of these actors not only consider the
WTO decision to be fundamentally flawed
but claim to have known this prior to its
adoption. We argue that a procedural norm
of consensus-seeking impeded traditional
bargaining over this sensitive issue and that
distrust among participants hindered truth-
seeking deliberation. Caught between
strategic and communicative actions, state
and non-state actors found themselves
trapped in their own rhetoric of reconciling
intellectual property with access to
medicines. They realized that the
appearance of a solution, rather than a
functional solution, provided the only realistic
solution to a fruitless and publicly damaging
continuation of debate. From a theoretical
perspective, this case study sheds a new
light on the gray zone between rational
choice and constructivism, where both
discourse and strategies matter. From an
empirical perspective, it illustrates the risk of
seeking consensus within international
regimes when the procedural norm of
consensus coexists with a high level of
distrust.
IP & BIOTECHNOLOGY
Patent Amendment Act 2005: Its
Effect on Indian Pharmaceutical
Company
Prantik Garai
Working Paper
(http://ssrn.com/abstract=1435186)
India has a history of the patent acts starting
form 1911. All happened was pre
independence. The Patent Act, 1970 was the
first patent act to the independent India. It
had provision for only process patent but did
not have any provision for product patent.
Therefore the process could have been
patented but not the end product which gave
rise to the concept of reverse mechanism.
Absence of product patent helped the Indian
pharmaceutical industries to use this at
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their advantage and find out a drug of same
specification by a different method. This
helped the Indian Pharmaceutical industries
to flourish. After India signed the TRIPS it
was obliged to amend the patent act and
introduce the product patent. The researcher
in the article discusses how the signing of
the TRIPS was detrimental to the interest of
the Indian Pharmaceutical Industries and its
effect on the Indian Economy. The
researcher in his paper would also deal in
details the amendment of the patent act and
its pros and corns.
University Patent Licensing for the
Research and Development of
Pharmaceuticals in Developing
Countries
Gail Evans
Intellectual Property Quarterly, No.3,
pp. 311-344, 2009
(http://ssrn.com/abstract=1447234)
More than 80 per cent of the world's
population lives in developing countries
where communicable diseases account for
50 per cent of the disease burden. The
opening Recital of World Health
Organization's Global Strategy and Plan of
Action on Public Health, Innovation and
Intellectual Property affirms the need to
construct a sustainable basis for research
and development relevant to diseases that
disproportionately affect developing
countries. The author discusses how
universities in developing countries should
negotiate for favourable patent licensing
agreements which would allow them to
research and develop drugs for neglected
diseases, to give other researchers access
to the patented technologies to develop them
further, and to ensure that public health
needs for the medicines are met.
Patents & the Progress of
Personalized Medicine: Biomarkers
Research as Lens
Matthew Herder
Annals of Health Law, Forthcoming
(http://ssrn.com/abstract=1435468)
Progress toward 'personalized medicine'
remains stymied by several factors. Most
glaring is the questionable quality of the data
expected to drive this new treatment
paradigm. Institutions and firms engaged in
'biomarkers' research have systematically
failed to validate newly discovered molecular
variations, be they genomic, proteomic,
metabolomic, or dynamic interactions
amongst them all, with clinical outcomes as
they amass and unfold over time. This is, in
part, attributable to deficiencies in the
present regulatory framework. Ambiguous
standards for evaluating study design and
product risk, as well as seemingly redundant
requirements from different regulatory
authorities have led some, if not driven
others, to escape oversight. However, it also
reflects a marked failure of coordination, a
failure not only to put into place large-scale
collections of biological specimens
accompanied by longitudinal patient health
information, but a failure to ensure
continuous data exchange amongst the
researchers, clinicians, healthcare providers,
and private firms already attempting to
commercialize biomarker-related
technologies. The argument advanced in this
paper is that intellectual property rights
(especially patents), and the set of practices
that those rights tend to engender, contribute
significantly to the paucity of data sharing
that currently pervades biomarkers research.
Further, these patent-related issues cannot
be easily disentangled from other barriers
facing personalized medicine, particularly the
deficiencies of the present regulatory
framework. And the way in which the
discourse around the impact of patent rights
upon early stage scientific research has
been framed helps account for why this
dimension of the problem has received
minimal attention to date.
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