Pursuing Public Policies Through the Patent System: Dos and Don’ts of Drafting the Patent Statute of a Developing Country

Pursuing Public Policies Through the Patent System: Dos and Don’ts of Drafting Patent Statutes for Developing Countries

Nuno Pires de Carvalho

There is a general consensus among intellectual property law experts - and among global organizations, such as the World Trade Organization and the World Intellectual Property Organization - that patent statutes for developing countries should recognize such countries’ distinctive public policies. In this deeply informative study, which analyzes more than fifty national statutes of developing countries and more than ten international agreements, one of the world’s most renowned intellectual property law scholars thoroughly describes the domestic objectives a developing country’s patent statute should pursue while still complying with international treaties.

The framework developed by Pires de Carvalho shows how, because inventors are granted effective security under the TRIPS Agreement to seek opportunities to commercially exploit their inventions in any country, the patent lawmaker of a developing country is under pressure to ensure that the law should reduce the burden of sharing the costs of invention to the minimum possible, and should provide for a mechanism of granting patents that is efficient but simple and cost-effective and does not impose a heavy burden on the country’s public administration yet still provide legal security to inventors.

In developing his framework, the author intensively explores such crucial approaches as the following:

• thorough analysis of how sensitive matters can be addressed, such as exclusions from patentability, patent amendments, compulsory licenses, and extension of patent terms;

• suggestions on language addressing topics of particular interest to developing countries, such as enabling disclosure, the requirement to disclose the origin of genetic resources, informed consent on the use of traditional knowledge, and the protection of handicrafts;

• implementing measures that, without infringing international obligations, seek creative solutions that respect the national interests in terms of reducing the exclusionary impact of patents owned by non-residents;

• substantive versus merely formal examination prior to the grant of the patent;

• recognition of inventions made by employees or civil servants; and

• understanding the impact of pre-grant and post-grant challenges, third-party observations, invalidation, and revocation.

Each chapter includes a useful dos and don’ts section indicating best practices, attending to the chapter’s particular focus.

The unmatched summary and analysis contained in this book will assist developing country lawmakers in pursuing the public policies of their choice through national patent statutes, explain the adequate meaning and scope of a large number of patent-related statutory provisions found in the laws of developing countries, and provide guidance for IP practitioners and ac...