06 June 2010

Are patent statutes unnecessarily complex?

The Australian Patents Act 1990 comprises 240 Sections, and covers 169 pages, including the 10-page Dictionary in Schedule 1 which is essential for the correct interpretation of the Act.  The corresponding Patents Regulations 1991 are 207 pages in length, not including the nearly 300 pages of Schedules (including copies of the Budapest Treaty and Regulations, and the Patent Cooperation Treaty and Rules).

Patentology is not sure if this is the most extensive patents legislation in the world, but if not it must come close.  The irony is that the Act and Regulations were the product of an effort in the late 1980's and early 1990's to draft legislation using "plain language", in the hope that this would make the law more accessible to ordinary citizens

Today Patentology asks the question: have modern patent statutes become needlessly complex, and if so is there any hope of a reversal of this trend?  We will begin our enquiry in Venice, if only because we like gondolas.

VENICE, 1474

You may be wondering about the ancient manuscript that adorns the upper part of the Patentology blog.  It is the full text (somewhat reduced and squashed) of the original Venetian Statute on Industrial Brevets of 1474, widely believed to be the first formally enacted patent law anywhere in the world.

The thing that Patentology finds most striking about the original Venetian Statute is how, in so few words, it manages to incorporate so many recognisable concepts of modern patent law, which makes us wonder whether modern patent statutes have become unnecessarily complex.

Translated into English, the Venetian Statute consists of a single, concise paragraph.  However, for our purposes it is convenient to break it down into a number of separate clauses:
  1. There are men in this city, and also there come other persons every day from different places by reason of its greatness and goodness, who have most clever minds, capable of devising and inventing all kinds of ingenious contrivances. And should it be legislated that the works and contrivances invented by them could not be copied and made by others so that they are deprived of their honour, men of such kind would exert their minds, invent and make things that would be of no small utility and benefit to our State.  Therefore, the decision has been made that, by authority of this Council,
  2. any person in this city
  3. who makes any new and ingenious contrivances not made heretofore in our Dominion, shall,
  4. as soon as it is perfected so that it can be used and exercised give notice of the same to the office of our Provveditori di Comun,
  5. having been forbidden up to ten years to any other person in any territory and place of ours to make a contrivance in the form and resemblance of that one without the consent and license of the author.
  6. And if nevertheless someone should make it, the aforesaid author and inventor will have the liberty to cite him before any office of this city, which office will force the aforesaid infringer to pay him the sum of one hundred ducats and immediately destroy the contrivance.
  7. But our Government will be free, at its complete discretion, to take and use for its needs any of the said contrivances and instruments, with this condition, however, that no one other than the authors shall operate them.
So here we have a seven-clause patents act, covering most of the major elements of modern patent law.  Patentology understands that this did not magically spring up fully-formed in 1474, but rather serves to codify and formalise existing practices.  The grant of Letters Patent, for example by Royal privilege, was neither new nor unique, but Venice may have been the first to attempt to formalise a set of criteria based upon merit, rather than the relationship of the patentee with local authorities!  Here, then, is a brief summary of the above clauses, for you to compare with their modern equivalents.
  1. Explanatory preamble, stating the purpose of the law.  It is notable that the statute was apparently viewed as a tool of economic policy, on the relatively modern terms of providing an incentive, in the form of monopoly, for individuals to develop (or import) new "contrivances" in Venice, in exchange for the social and economic benefit that would thereby accrue to the city.
  2. Who may be granted a patent ("any person in this city").  This embodies a concept of individual authorship or inventorship as a basis for rights.  At the time, it was common for knowledge to be maintained as trade secrets by guilds of artisans, which were generally more concerned with maintaining control, on the principle that "knowledge is power", rather than seeking specific reward or compensation, or broader benefit to society.
  3. Requirement for novelty ("new") and inventive step ("ingenious").  Consistent with the economic circumstances of the time, Venice was a local novelty jurisdiction, in which account was taken only of prior art within "our Dominion".  Thus, technology imported from elsewhere could be protected by patent.
  4. Ready for patenting.  The invention needs to be demonstrably operable, and therefore useful to society, before it can be patented.  Nowadays we do not generally require demonstrated utility.  Plausibility along with a sufficiently detailed description is sufficient in most jurisdictions.  There also seems to be a requirement of diligence in the words "as soon as".  Presumably an inventor who did not promptly petition for patent protection would lose the right to do so.
  5. Patent term (ten years), and scope of granted rights (monopoly right to make or to license others to make).
  6. Provision for infringement and remedies, in the form of financial compensation and destruction of infringing articles.
  7. "Crown use" provision.  As with many of its modern counterparts, this effectively takes the form of a compulsory license, preventing the Government from abusing the privilege by simply allowing other parties to make and use the invention in competition with the inventor.

Now, Patentology would not suggest that a modern patent statute could be drafted in just seven clauses.  In fairness, the Venetians did not have patent specifications, claims, written description requirements, national and international priority claims, formal examination processes, re-examination, opposition, contributory infringement provisions, compulsory licensing, or a patent attorney profession to regulate, all of which are covered by the Australian Patents Act, and are doubtless useful developments of the past five centuries or so.

But surely these benefits could be achieved with greater brevity than in various current statutes?

If, in 169 pages of legislation and 207 pages of regulation, the Australian statute achieved a perfect and unambiguous codification of the patent law, such that the courts could focus on resolving disputes of a factual nature between parties with no need to divert attention to statutory interpretation, then the volume of verbiage might be justified.  But, on the contrary, almost every one of the above-listed provisions of the Act have been subject to dispute and judicial consideration at some stage since the Act came into force, only about two decades ago.  Additionally, the age-old questions of how novelty and inventive step are to be assessed continue to arise regularly, despite being more extensively codified in the Australian Act than in any other statute with which Patentology is familiar.

Patent law is an instrument of economic policy, and as such must necessarily be set down in legislation crafted by the government of the day in order to satisfy rational policy objectives.  It is understandable that governments do not wish to leave the development of such laws entirely in the hands of the courts, and other decision-making bodies.  But even so, the tendency to try to fine-tune every element of the legislation is counterproductive, in that it complicates rather than simplifies the law for those who use it.  Furthermore, experience suggests that more extensive and detailed legislation creates more, rather than fewer, potential areas of legal dispute and uncertainty.

It seems unlikely that we will see shorter and simpler patent legislation any time soon, given that the trend is, if anything, in the opposite direction.  Nonetheless, Patentology welcomes comments, suggestions, and proposed draft legislation!


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