USPTO is currently considering a pilot program to grant priority review vouchers
as an incentive mechanism for technologies or licensing that responds to
humanitarian needs. KEI, MSF, Oxfam and PC previously submitted comments on November 19, 2010 and
provided additional comments on March
4, 2011 with UAEM.
On July 13,
2011, KEI, MSF, Oxfam and PC responded to two questions recently posed by UPSTO
on its proposed pilot program. These questions related to the publicity value
of the awards and transferability of the vouchers. The comments submitted by
these civil society organizations are available
here.
July 13, 2011
The undersigned
organizations would like to express our appreciation to USPTO for the continued
opportunity to comment on the proposed program to “Incentivize Humanitarian
Technologies and Licensing through the Intellectual Property System.” We
previously submitted comments on this proposed pilot program on November 19,
2010 and on March 4, 2011.
The USPTO has
further contacted us with the following questions:
“1. We really
want to maximize the publicity value of the awards. This advances a major goal
of the program: showcasing positive examples of patent holders addressing
humanitarian issues without sacrificing commercial markets. To this end, we`re
considering making awards once a year instead of twice. This should increase
the splash factor.
2. Because this
is a new area for USPTO, we respect stakeholders` concerns and want to proceed
cautiously. One option would be to offer a non-transferrable voucher incentive
that recipients can use to accelerate their own patent cases, but not transfer
to others.
How much would
either of these changes affect your interest or ability to participate in the
program?"
As we addressed
in our previous comments, we are supportive of USPTO`s efforts to introduce
innovative incentive mechanisms to promote the development and widespread
distribution at affordable prices of technologies that address the needs of
people living in developing countries.
In order to
ensure the effectiveness of this program, we believe that it is important that
the proposed vouchers have significant economic value and that they create
incentives for truly humanitarian initiatives. The mechanism should therefore
limit the number of vouchers awarded and allow transferability.
Number of
prizes granted & minimum standards
We have no
common view on the timing of the voucher awards.
We do have a
common view that the number of vouchers awarded each year should be limited.
As we detailed
in earlier submissions, we support a system where the applications for vouchers
must meet minimum public interest standards. In the event that none of the
applications meet the minimum standards in a given year, USPTO should not be
mandated to grant a voucher and the competition should be considered deserted.
Only deserving applicants whose proposals are truly responsive to the needs of
developing countries and disadvantaged populations should be awarded a voucher.
For example, the promotion of a new medical technology that is not affordable
or not adapted to the medical and operational needs of people in developing
countries should not be considered as deserving the voucher.
By limiting the
number of vouchers and awarding them only to truly meritorious applications,
the USPTO will increase the humanitarian impact of the program..
Transferability
of Vouchers
In order to
enhance the value of the voucher and the impact of the proposed program, the
USPTO should make the voucher transferable. If the winners are able to transfer
the voucher, the economic value of the award will clearly be higher to almost
all applicants than if they are required to use the voucher for their own
patents. If the program does not allow for transferability, the vouchers are
also more likely to be valuable to big entities than to small entities. The
USPTO incentive mechanism should stimulate licensing activities by both large and
small entities. Some have proposed to limit transferability across sectors or
technologies. This may be appropriate, if there is evidence that it would avoid
the gaming of the system.
USPTO should
also consider allowing the program to be used to initiate third party
reexamination. Expanding the program in this manner could increase the value
and usefulness of the vouchers, attracting bidders who might want to advance
their own cases or to challenge a particular patent.
Finally, we
would like to encourage the USPTO to continue designing these mechanisms and
implementing it with high levels of transparency and public participation,
while avoiding conflicts of interest.
We would like
to reaffirm our support for USPTO`s efforts to implement a pilot program to
incentivize humanitarian technologies and licensing and appreciate the
continued opportunity to provide feedback.