Improving Patent Information Quality: Development and the Disclosure Requirements

• Date: 01 May 2012
• DOI: http://doi.org/10.1111/j.1747-1796.2012.00438.x
• Author: Nefissa Chakroun
• Published date: 01 May 2012

The Journal of World Intellectual Property (2012) Vol. 15, no. 3, pp. 199–220

doi: 10.1111/j.1747-1796.2012.00438.x

Improving Patent Information Quality: Development

and the Disclosure Requirements

Nef‌issa Chakroun

University of London

The paper is based on the premise that disclosure of patent information is essential for development. Thus,the

question posed is related to the extent to which substantive disclosure rules can secure the release of quality

patent informationthat can be easily retrieved and utilized for development. Tothis end, the paper has made the

argument that clear and complete disclosure might not be necessarily adequate to secure disclosure of quality

patent informationso that access and exploitation of this technical knowledge is less than optimal in developing

countries. Apart fromthat, the research has suggested that improving patent informationquality in itself might

not be suff‌icient enough to secureaccess to this technical knowledge.Because availabilityof information does not

always mean that it is accessible, the paper has analysed impediments to the accessibility of patent information

showing that in practical terms, accessibility to technical knowledgemight be quite poor.

Keywords patentinformation; disclosure requirements; technology transfer; development

Playing a fundamental role in the checks and balance mechanism of the patent system, disclosed

patent information is considered critical for the advancement of science and technology (Fromer,

2009; Matthews, 2010). Describing its features, the latter has been conceived as a “public good”

available for everybody use (WIPO, SCP 13/5, 2009). Based on this aff‌irmation, the paper is an

appraisal of the development function of patent information essentially from a developing country

perspective.

Trying to quantify the amount of patent information that is available to the public, it appears

that the total number of patentdocuments is estimated at 65 million worldwide.1Ofthese documents,

the total number of patents in force reached 6.7 million in 2008.2By elimination, this amount of

patent information representstechnologies sealed by the exclusive right.3Unless royalties are paid to

their owners, the exploitation of these technologies is subject to the patent holder’s authorization in

all territories where a patent has been issued and maintained in force. Despite this assertion, patents

in force represent only 10.3% of the total documents available worldwide.In other words, 58 million

patent documents fulf‌il the World Intellectual Property Organization’s (WIPO) def‌inition of “public

good”.

However, in practice, precisely the reverse happens. Modern, large-scale patenting creates com-

plex rules, that leads to vagueness and ambiguity. Often engineers have doubts about the scope of

the information they have found, as patents do not come with settled boundaries (Drahos, 2007).

This poses the problem whether requirements governing the disclosure of patent information are

adequate enough to secure the release of quality patent information? It also raises another concern

related to the rules governing the various means through which disclosure of this information to

third parties is performed. It is not enough to commit the patentee to high disclosure standardsif the

patent off‌ice is not committed to similar standards whenpublishing this information to the public for

inspection.

Furthermore, the assertion that huge amounts of patent information are available in the public

domain, needs to be interpreted with caution as a variety of digitized patent records consist of

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Nef‌issa Chakroun Improving Patent Information Quality for Development

basic information only. Additionally, less than half may have a searchable abstract. A recent survey

carried out by the International Bureau of WIPO showsthat almost 30% of responding patent off‌ices

indicated that their patent collections are available in paper format only.4This might give rise to

several problems.

First, availability of patent information does not necessarily mean that it is accessible especially

by developing countries. In this respect, among 184 Member States of WIPO, patent information is

available in electronic format for around 80 patent off‌ices only. More crucially, much of this data is

simple bibliographic data recordsoften without title or an abstract for search and retrieval purposes.

Full text of patent documents as well as detailed status information, including the legal status of the

patent is available for a minority of patent off‌ices only (WIPO, SCP 13/5, 2009).

Second, because developing countries might not have full access to the legal status of the

patent, this poses the problem of the utilization of the patent as there is a lack of information

about rights of exploitation that are available under the relevant domestic laws.5Based on the

above, this paper argues that clear and complete disclosure might not be necessarily adequate to

secure disclosure of quality patent information that is easily retrieved and exploited by developing

countries.

In the exposition of this argument, the paper proceeds by f‌irst offering a def‌initions section

aimed at clarifying the signif‌icance of some technical terms relevant to the research. Second, it

offers a critical examination of the law regulating the disclosure of patent information. In this

respect, the paper makes several proposals concerning the various ways in which quality patent

information can be improved including the adoption of quality standards for patent applications.

Third, while demonstrating howthe patent system allows access to patent information, the paper will

try to investigate barriers impeding retrieval and utilization of patent information for development.

Conversely, in view of the current assistance provided by WIPO Development Agenda, the research

will discuss the extent to which these programmes are enhancing the developing countries capacity

to access and utilize patent information for development.

Def‌inition and Clarif‌ications

To start with, patent information refers to technical information contained in patent documents.6

Information encompassed in these documents exceeds the mere technical information claiming

protection for a particular invention to include chronological, geographical and related technical

reference information (Buchanan, 2008; Smith, 1986). Thus, patent information is understood to

comprise the descriptive content of the published application and granted patents as well as the

bibliographic data, priority, f‌iling date, inventor, applicant and classif‌ication in published patent

documents.

It also refers to legal status data relating to patent applications and published patents, in addi-

tion to information on the patentee and licences. Added information can also be obtained through

statistical analysis of the data on patentingstrategies, ownerships structures and development trends

from which conclusions can be drawnin relation to the economic signif‌icance of patent applications

and patents (Edfjall, 2008). A review of the literature reveals that when referring to patent informa-

tion, commentators might also use the term “technical information” or “technological knowledge”

(Devlin, 2010; Olin, 2005; WIPO, GRTKF/IC/6/INF/4, 2004). In the same context, it might also

be relevant to def‌ine whatis meant by “patent application” as it is the legal instrument through which

the patentee discloses the technical knowledge.

To this end, the def‌inition will differentiate between the content and the form of the applica-

tion. As far as the content is concerned, it is worth mentioning that national and regional patent

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C2012 Blackwell PublishingLtd

The Journal of World IntellectualProperty (2012) Vol. 15, no. 3