Sui generis doesn’t solve and kills developing economies and SMEs
Suthersanen 19 [Uma, holds a Chair in Global Intellectual Property Law and is the current Director of the Queen Mary Intellectual Property Research Institute. Uma was previously the Academic Director of the London Intellectual Property Law LLM (2012-2021), and the Paris Intellectual Property Law LLM (2012-2015). “Utility models: do they really serve national innovation strategies?,” chapter from The Innovation Society and Intellectual Property, e,dited by Josef Drexl and Anselm Kamperman Sanders, https://www.elgaronline.com/configurable/content/edcoll$002f9781789902341$002f9781789902341.00010.xml?t:ac=edcoll%24002f9781789902341%24002f9781789902341.00010.xml, ALB]
But is this a sufficient basis for the introduction of yet another intellectual property right, notably as the right in question appears to undermine essential principles of the current patent law? All intellectual property rights are predicated on the notion that inventions and creative works are in the public domain unless such works fulfil various thresholds, such as novelty or inventive step (in the case of patents), originality or distinctiveness (in the cases of copyright or trade mark).
Partly in deference to the high societal costs imposed by the conferral of a proprietary right, which will stifle competition for a short time, and partly to forestall duplication of patent protection for identical or similar inventions, the examination system is a major element of the patent regime. The justifications of the traditional patent law are reconfirmed during the examination process. Providing second tier rights for inventions that fail to meet such standards undermines both the public–private boundary and the doctrinal bases of intel- lectual property rights.
The worrying concern is that utility model laws can result in barring the entry of both new and competing substitutive products,26 especially in capitalist market based economies, where it is generally accepted that all market actors – including competitors, follow-on creators and consumers – should be allowed to freely use such public domain works which fall short of the required standards. Developing countries, in particular, should be cautious in broadening protection to cover all types of innovations – irrespective of whether they are minor and low cost innovations, or instead involve complex and cutting edge technologies, such as in the case of biological and pharma- ceutical products.27
Indeed, there is a reasonable concern that larger market players may use utility models as a means of circumventing the more stringent criteria under the patent system and overuse the system in ways that make it hard for SMEs to compete. Certainly, the lack of substantive examination prior to grant will give rise to uncertainty for third parties when conducting infringement searches to ascertain what valid rights exist in a particular field of technology, which may act as an additional barrier to competitors and lead to abusive behaviour by foreign applicants.