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