Enforcing QualityNew methods of strengthening the IP-Systems in Europe

Peter R. Slowinski, Mediator (CVM)Max-Planck-Institute for Intellectual Property, Competition and Tax Law, Munich

Geneva, 26th – 28th May 2010

WIPO SeminarIntellectual Property Reforms – International and Comparative Perspectives

The dilemma of weak IP-rights (I)

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law2

• What are „weak“ IP-rights? Rights that should not have been granted Rights that do not deserve full protection

• Rise of low-quality IP-rights (Trash) Patents Trademarks Designs / Copyright

The dilemma of weak IP-rights (II)

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law3

• Weak IP-rights hinder innovation and creativity

• Weak IP-rights are especially a threat to SMEs

• Weak rights do not contribute (sufficiently) to economical and technological development

• Weak IP-rights are a threat to the concept of intellectual property as such

A solution to the dilemma of weak rights is required

The traditional approach

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law4

Raising the bar

Change of requirements forObtaining IP-rights

The idea behind:

The more difficult it is to obtain a right, the better thequality of this right must be

The flaw in the idea

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law5

• Weak rights are a relatively new phenomenon

• Weak rights are strongly related to new areas of economy

• The – written – law did not lower the bar

Therefore:

The question to ask is: „What are the reasons for weak rights?“

What are the reasons?

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law6

• There is a work overload in the offices

• New technologies are more complex and develop more quickly

• There are not enough incentives for offices, applicants and third parties to improve the quality of rights

What can be done?

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law7

• More personal and money for the offices?

• More training for the officials?

• Involve third parties in the granting-process

• Incentives for applicants, offices and third parties

However, a lot of weak rights already have been grantedand

we will never be able to prevent weak rightsaltogether.

IP - rights

The idea: the enforcement of IP-rights

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law8

Three ways of enforcement

The action for infringement

The negativedeclaratory actions

Actions for declarationof invalidity

Incentives to challenge weak rights

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law9

Are there sufficient incentives for competitors to challengeweak IP-rights?

How can the system be improved?

• The competitor bears der risk alone

• The competitor bears the costs alone

• The competitor has to share the fruits of his/her victory

Possible ways to create incentives

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law10

• A head-start for the brave.

• Reducing the costs of legal proceedings

• Reducing the risks of legal proceedings

Problem: A situation contrary to the law is perpetuated by the law.

However, it is a limited situation compared to a (indefinitely) ongoing situation.

High risk of misuse of thelegal proceedings

The idea: the enforcement of IP-rights

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law11

Three ways of enforcement

The actions for infringement

IP - rights

Actions for declarationof invalidity

The negativedeclaratory actions

Improving Enforcement

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law12

• One specialized judicial branch for IP

• Create a more efficient court system

• No separation between actions concerned with infringement and validity

The idea: the enforcement of IP-rights

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law13

Three ways of enforcement

The actions for infringement

IP - rights

Actions for declarationof invalidity

The negativedeclaratory actions

Limitation of Enforcement

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law14

FRAND Fair use Ebay vs. MercExchange„Equity“ / Misuse

Art. 82 ECdiscrimination

„fair“ ? unfair conduct weak rights

? ? ?

1. Limitation of IP-rights is not contrary to the idea of intellectual property

2. There already are limitations to the enforcement of IP-rights

The use of every kind of property can be limited in the public interest

How to limit the enforcement?

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law15

1. What are weak rights?

3. How can we measure the strength of an IP right?

2. Who shall measure the strength?

How do we measure quality?

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law16

Patents

Inventive step

Trade Marks

OriginalityIndividual characterDistinctiveness

Design Copyright

Summary

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law17

Limitations to weak rights

Incentivesto challenge weak rights

Granting procedure

Quality of IP-rights

Result: Stronger IP rights system

Peter R. Slowinski, Mediator (CVM) – MPI for Intellectual Property, Competition

and Tax Law18

• Stronger IP-rights support innovation and creativity

• Stronger IP-rights help SMEs

• A smaller number of stronger rights does contribute more to economical and technological development

• Stronger IP-rights contribute to the concept of intellectual property as such

A solution to the dilemma of weak rights is possible

Thank you for your attention.

Peter R. Slowinski, Mediator (CVM)Max-Planck-Institute for Intellectual Property, Competition and Tax Law