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Monday, 13 September 2010

Time to welcome the nimbus?

IPKat team member Jeremy was kindly invited to write a guest editorial for the CIPA Journal. Knowing what an august organ that journal is [or, until this month, was, says Merpel], he donned his thinking cap and wrote this:

Three cheers for two tiers? It’s time to welcome the nimbus

The world is divided between countries with one tier of protection for inventions—patents—and those with two: patents and, for initially unexamined or under-examined inventions that may even fulfil the criteria of patentability, “the Thing”. No-one can agree on the name of this “Thing”: some call it an innovation patent, others may name it a petty patent, short term patent, utility model or gebrauchsmuster. Let’s call it the nimbus since (i) like the cloud, no-one seems to be able to grasp it, and (ii) nimbus stands for the initial letters of “nifty innovations may be usefully sued-upon”.
The nimbus has had a life of vicissitudes that knocks Voltaire’s Candide into the shade. Vaunted in some countries as a means of providing at least a fig-leaf of protection for a bare innovation, it is shunned in others as an irrelevance. Even among those countries which provide the second tier there is no consensus as to what precisely it should be. When back in 1999 the European Commission presented its Amended proposal for a Directive on the protection of inventions by utility model, the proposal did not adopt any of the already-operating national models. Instead of taking a tried-and-tested national formula from the menagerie of national laws, the Commission opted for a hybrid, a hippogriff. No-one liked the look of it and, to mix a metaphor, this hippogriff withered on the vine of European harmonisation.
Ambivalence towards the nimbus is not confined to the European Union and its constituent parts. While over 80 jurisdictions have their own nimbus, and the concept is enshrined in international law (‘utility model’ is mentioned 13 times in the Paris Convention on the Protection of Industrial Property), the World Intellectual Property Organization (WIPO) keeps it discreetly tucked away in the depths of its website, stating “Only a small but significant number of countries and regions provide the option of utility model protection”.
That “small but significant” group of countries which provide second tier protection doesn’t seem to be in a hurry to scrap them. Indeed, one rather imagines that China, South Korea, Japan and Germany have done rather well out of them. A perusal of statistics, furnished to WIPO by those countries that remember to send them in, indicates that nimbus protection is sought far more often by local enterprises than by foreign ones. This is quite the opposite for patents where, in most countries, foreign-originating applications easily outnumber the domestic ones.
If nothing else, the imbalance in favour of local applicants indicates that the cumulative effect of running a system for nimbus protection is that the local economy is more difficult for outsiders to penetrate—a sort of de facto protectionism that, one expects, is tacitly welcomed as a way of shielding small and medium-sized businesses against technologically sophisticated and more strongly-resourced invaders. Curiously, when discussing the nature and level of protection of innovation with me, many intellectual property practitioners in nimbus-positive countries fail to mention the second tier of protection at all unless I raise it with them. If foreign applicants and their professional representatives are not told of this option unless they ask about it, it is hardly surprising that the preponderant majority of nimbus holders in many countries is local rather than foreign.
There can never have been a more propitious time to bring the nimbus back into the great discussion about the role of IP than now. SMEs are crying out for protection and many cannot afford patents; patent offices are overloaded with unexamined “real” patents; investors feel more comfortable to back a venture which enjoys even apparent protection in preference to one which lacks it; professional representatives are increasingly looking for things to do in a world in which international cooperation, pan-Europeanisation, harmonisation and globalisation reduce the areas in which they can provide valuable (and therefore billable) services to their clients; publishers despair of finding new topics on which to publish the reference work, the authoritative text and the beginner’s introduction. The nimbus would provide some measure of relief to each of these IP pressure sores.
Having praised the virtue of the nimbus and demonstrated its potential as a remedy for many ills, we must now ask: where do we go from here? An objective, evidence-based assessment of how nimbuses function in countries that have them would make a good start. If the case in favour is proved, we must then dig a pit that is big enough to bury our prejudices. Once they are gone, it will be time to exercise legislative ingenuity, to enact a scheme that works—and work it".
While it is plain from the tone of this editorial that it was written in slightly tongue-in-cheek fashion, there is more than a grain of serious intent behind it. Readers' comments are welcome, as ever.

More nimbus here
Plural of nimbus here and here
Nimby here

11 comments:

Stephen Adams said...

I'm glad to see that some people may be wanting to take these instruments seriously. Speaking as a searcher, the main issue is (a) their high volume, in some countries reaching or exceeding the number of 'real' patents and (b) their virtual invisibility due to lack of coverage in most reputable databases. The law says they're part of the state of the art, but they are difficult to locate. Let's not forget that the biggest Chinese litigation, Chint -v- Schneider, was centred on a utility model. By all means promote them as an alternative to patents, but bear in mind that you may be laying an unseen minefield for future applicants, including perhaps yourself, unless parallel action is taken to improve accessibility to the documents. They should not be seen as a 'quick fix' to comfort investors who want to see some (any) form of IP protection in place. From the point of view of the searcher, they must be treated on an equal footing with every other piece of the state of the art, and at the moment that does not happen.

Anonymous said...

The PCT explicitly provides for obtaining utility models or other forms of non-patent protection for technical subject-matter after entry into the national phase. This is provided in Art.43 PCT, indeed the PCT is geared to preserving the applicant's option to request such protection upon entry into the national phase, by providing in Rule 4.9(a)(ii) PCT that the PCT request form constitutes a request for all possible types of protection in all designated states which have such a possibility. Furthermore, since the request form is an obligatory part of the International application under Art.3(2) PCT, this keeping open of the non-patent option is automatic. After entry into the national phase, the applicant must then confirm this non-patent choice (Rule 49bis.1(a) PCT).

MaxDrei said...

Whoever writes that a utility model is not a patent ought to check out Germany, where at least the US medical device industry is well-aware that these things are 20 year patents with a term cropped back to 10 years. They get the same scope of protection (Art 69 EPC) but their validity is assessed relative to a less than "absolute" state of the art, and enjoy a grace period to boot.

I wonder, how many UK patent law firms offer their US clients the opportunity to "branch off" from their struggling EPO application a German Gebrauchsmuster Abzweigung? You can do it even while a post-issue EPO opposition is pending (if any of the 10 year term remains).

Jeremy said...

@MaxDrei: you write "I wonder, how many UK patent law firms offer their US clients the opportunity to "branch off" from their struggling EPO application a German Gebrauchsmuster Abzweigung?"

I hope some UK patent practitioners --- and their clients -- will answer this question. My impression sadly is that many of them neither know nor care. I do hope they emphatically prove me wrong.

Anonymous said...

The syllabus for P5 "Basic Overseas Patent Law and Procedure" for the UK patent attorneys exams includes "Applying for and obtaining a patent or utility model overseas by national applications and via the PCT and EPC".

This has been an ongoing requirement. It was certainly expected to be known some decades ago when I took the exams, when the syllabus for the equivalent to this paper was effectively: "you need to know everything about patents, utility models, petty patents, patents of revalidation... for all significant countries including but not limited to... " and then a great long list of anywhere you'd ever heard of. Happy days!!

The TradeMarkovs' said...

From a utility-model-small-but-significant country:

patents utility models
Registered / 2008 95 149
Reg. up to 2008 393 398

Regarding the 1/2 time of protection, the UM are double as much as the patents. Yet they are regulated by 20 articles in the Patent Act only. The Act over-regulates in details something barely existing, especially compared to the 100 000 TM applications or 10 000 design applications. UM is crucial not only for SME, but for SMC economies as well. However the Act under-estimates this experience.

5 non-domestic applicants for UM - you're right that representatives & layers should bear the UM in mind. Not only the branch off (transformation) but also the parallel application, the PCT/national system possibilities for branch off after negative International Preliminary Search Report long after the priority date, the difficulties to invalidate or revoke the UM due to the low criteria, the good instrument to protect lay-out design of integrated circuits are advantages

Anonymous said...

I'm not sure whether it's a good thing to promote the "Nimbus". While in principle they appear to be a thoughtful alternative for cash-strapped inventors and small enterprises, in my experience well over 90% of those titles are utter dross that couldn't stand five minutes' hard scrutiny in court. And while I've adviced my clients to go to utility models when they have difficulty obtaining a full-blown patent, it must be said that, in general, when you've difficulty obtaining a patent grant, it's because you plainly don't deserve it.
Moreover, utility models have often "interesting" quirks. For instance, in many countries, no absolute novelty is required, and you may be able to validly obtain protection for an invention that has been disclosed abroad, as long as the disclosure wasn't in print. This rather unpleasant feature, which originates in German patent law, is being for example rather shamelessly exploited in China, with a number of companies filing utility models for designs of foreign companies which those foreign companies have neglected to protect or publish in print, in the mistaken belief that they were not inventive enough to deserve any sort of protection...

MaxDrei said...

Well said, that contributer. The German GBM is a so-called "unexamined right" with no presumption of validity, but plenty of nuisance value.

Ironic, that the Americans are so proud of their "strong" patent system built on their presumption of validity, when the strength manifests itself in high power to intimidate (blackmail?) while the German system offers opportunities to intimidate based on an unexamined right.

I think that, in today's world, there is no need for these mischief-making "unexamined rights"

The TradeMarkovs' said...

Not necessarily unexamined. The applicant has the option for search / examination, as well as his or her opponents may lodge the same demand (during the whole period of protection). If nobody opts for, why wasting time and efforts?

You are focused on prior art and relative state-of-art, but 'inventive' step is loose more often than not. I had the strange vision, that rather rigid criteria do not allow any animal 'to stand five minutes hard scrutiny in court'. The lower the threshold, the more difficult to overcome it.

MaxDrei, the last is difficult to happen. In the moment you are intimidated by GebrM Inhaber, you counterattack its validity. If you are not successful, the GebrM deserves protection. Examiners make mistakes but stake-holders - seldom.
But may be Grand-Duché de Luxembourg is right to be one of the three EU countries without GebrMG.

MaxDrei said...

Markovs: Yes, only that which is not obvious is valid. Yes you can counter-attack on validity. But, in Germany, the obviousness standard is now the same, for 10 year and for 20 year patents. I can see why the US medical device makers like their German GBM portfolio, but in what way, exactly, does the German economy benefit, from issuing these unexamined rights? I think you, Luxembourg and the UK are right, that 10 year patents are not needed.

The TradeMarkovs' said...

@MaxDre: I've been fascinated by your comments on patent topics. I'm afraid that this might turn out to be a personal communication, so I evade details.

I know the GebrMG & Verordnung and the obviousness standard there (actually, if the state-of-art is relative and not absolute, then there are some concessions for the PSA for GebrM). But I'm speaking from a member-state with modest resources for R & D, shattered industry now, where the inventive step is not connected with obviousness for a PSA, but with the possibilities of a person, that got to be used to the art, to carry out the model, etc. It's not the Australian 'innovative step', which does not confer any exclusive rights. Different context here, so I believe we need it - and my clients (applicants, defendants, etc.) think so as well.

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