Accommodating User Innovation in the International Intellectual Property Regime: A Global Administrative Law Approach

• Jurisdiction: South Africa
• Pages: 283-319
• Citation: 2009 Acta Juridica 283
• Date: 15 August 2019
• Published date: 15 August 2019
• Author: Katherine J Strandburg

Accommodating User Innovation in the

International Intellectual Property

Regime: A Global Administrative Law

Approach

KATHERINEJ STRANDBURG*

New YorkUniversity

I INTRODUCTION

Since the negotiation of the Agreement on Trade-Related Aspects of

Intellectual Property (TRIPS) in 1994,

1

the innovative landscape has

undergone dramatic changes due to technological advances in f‌ields such

as biotechnology, nanotechnology, and digital communications and com-

putation.

2

Notably, the negotiation of TRIPS coincided almost exactly

with the rise in importance of the Internet following the invention of the

World Wide Weband the introduction of the Mosaic web browser in the

early 1990s.

3

These technological changes have spawned major social

changes, which are increasingly felt not only in developed countries, but

also throughout the world. The resulting changes in the innovative

landscape, especially as instantiated in the complex technologies of the

information technology industry, have given rise to controversy about the

proper contours of intellectual property protection and to upheaval in the

political economy of intellectual property lawmaking. This upheaval is

ref‌lected, for example, in the split between the pharmaceutical sector and

* Professor of Law, New YorkUniversity School of Law. I would like to thank Kevin Davis,

Rochelle Dreyfuss, Margaret Chon, Ruth Okediji, and Graeme Dinwoodie, along with the

participants at the Cape TownGlobal Administrative Law Workshop for invaluable comments.

I would also like to thank Hima Lawrence for providing excellent research assistance. A more

extensive, but somewhat less up to date, report of this research is available at K J Strandburg

‘Evolving innovation paradigms and the global intellectual property regime’ (2009) 41

Connecticut Law Review 861.

1

Agreement on Trade-RelatedAspects of Intellectual Property Rights (1994) [hereinafter:

TRIPS] WTO Agreement,Annex 1C, Legal Instruments-Results of the Uruguay Round, 33

I.L.M. 1197. See also D J Gervais The TripsAgreement: Drafting History and Analysis 2ed (2003).

2

For a recent discussion of some of these changes and their implications for intellectual

property, see European Patent Off‌ice (EPO) Scenarios for the Future – How Might IP Regimes

Evolve by 2025? What Global Legitimacy Might Such Regimes Have? (2007), available at

http://www.epo.org/topics/patent-system/scenarios-for-the-future.html [hereinafter: EPO Scenarios].

The discussion of the evidence for the ‘Trees of Knowledge’ (at 66) and ‘Blue Skies’(at 84)

scenarios are particularly relevant.

3

See, for example, Mosaic: The Original Browser, available at http://www.nsf.gov/about/

history/nsf0050/internet/mosaic.htm.

283

2009 Acta Juridica 283

© Juta and Company (Pty) Ltd

many information technology companies in their positions on patent

reform in the United States.

4

Even more than by that debate, however, the social role of intellectual

property protection should be brought into question by an explosion of

innovative activity that does not f‌it into the sales-oriented, proprietary

model which underlies intellectual property doctrine. Traditional justif‌i-

cations for intellectual property implicitly assume an innovator who seeks

either to sell embodiments of an invention or to license rights to the

invention. Intellectual property rights are seen as mechanisms to provide

incentives for innovation by awarding a period of exclusivity during

which a creator can recoup investments through market exclusivity.

5

The

assumption that inventors are motivated primarily by the possibility of

selling their inventions is weakened, for example, by the increasing

importance of user innovation.

6

User innovation is not new, but it had

been pushed into the background by the ascendance of industrial research

and development along with a paradigm of mass production. Technologi-

cal advances have revitalised this and other alternative paradigms for

innovation. This article contends that shifting modes of innovation must

be taken into account in assessing the global intellectual property regime.

There has been considerable scholarly and public debate about the

impact of the TRIPS minimum standards approach to patent law on

consumer access to patented technology – particularly in the public-

health-related f‌ields of pharmaceuticals and agriculture.

7

Indeed, that

debate has led to modif‌ications of the TRIPS agreement as ref‌lected in the

4

See, for a discussion of these differences, C Holman ‘Biotechnology’s prescription for

patent reform’ (2006) 5 John Marshall Review of Intellectual Property Law 317. See also, EPO

Scenarios (n 2) 94–96.

5

For discussions of the traditional incentive theories of patenting, see for example,

R D Blair & T F Cotter ‘Rethinking patent damages’(2001) 10 Texas Intellectual Property Law

Journal 1 at 78–80; R S Eisenberg ‘Patents and the progress of science: exclusive rights and

experimental use’ (1989) 56 University of Chicago Law Review 1017, 1024–28; K J Strandburg

‘What does the public get?: Experimental use and the patent bargain’ (2004) 81 WisconsinLaw

Review 81 at 90–93.

6

For an overview of user innovation, see E von Hippel Democratizing Innovation (2005). For

a more detailed discussion of the relationship between user innovation and patent incentive

theories, see K J Strandburg ‘Users as innovators: implications for patent doctrine’ (2008) 79

University of Colorado Law Review 467 at 483–90.

7

See, for example, M Chon ‘Intellectual property and the development divide’ (2006) 27

Cardozo Law Review 2821; D J Gervais ‘Intellectual property,trade & development: the state of

play’(2005) 74 Fordham Law Review 505; P K Yu‘TRIPS and its discontents’ (2006) 10 Marquette

Intellectual Property Law Review 369; R C Dreyfuss ‘TRIPS–Round II: should users strike back?’

(2004) 71 University of Chicago Law Review 21. See also articles in G B Dinwoodie (ed)

Symposium: Intellectual Property, Trade and Development: Accommodating and Reconciling Different

National Levels of Protection (2007) 82 Chicago-Kent Law Review and articles in Symposium:

Traditional Knowledge, Intellectual Property, and Indigenous Culture (2003) 11 Cardozo Journal of

International & Comparative Law; T W Pogge ‘Human rights and global health: a research

program’(2005) 36 Metaphilosophy 182.

284 GLOBAL ADMINISTRATIVE LAW

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Doha Declarations

8

and to the adoption of a Development Agenda by the

World Intellectual Property Organisation (WIPO).

9

There has also been

increasing recognition of the extent to which TRIPS minimum standards

of IP protection can upset the balance between initial and follow-on

innovation by focusing too much on the need to incentivise initial

innovations at the cost of providing access to those innovations for

follow-on innovators. The few WTO dispute resolution panel decisions

to have interpreted TRIPS exceptions have been criticised for exacerbat-

ing these problems by taking an overly cramped approach to the f‌lexibili-

ties provided by TRIPS.

10

There has been considerably less discussion,

however, about the interplay between the global intellectual property

regime and user innovation or any other non-sales-motivated innovation

paradigm.

11

In this article, I argue that, over and above previously appreciated

problems with regard to access and the traditional IP balance, the trouble

with TRIPS – and with the global intellectual property law regime more

generally – is that it is ill-designed to cope with changes in the innovative

process and with the likely heterogeneity of desirable innovation

approaches in different global contexts. While it is possible that current

TRIPS f‌lexibilities can be interpreted in ways that will better balance the

needs of initial innovators against those of users and follow-on innovators,

the very structure of the agreement is based on an assumption of mass

market, seller-based innovation which may make it diff‌icult to accommo-

date newer innovation paradigms.

The experience of the past 15 years should serve as a cautionary tale

regarding the wisdom of enshrining substantive rules based on any

8

See World Trade Organisation, Ministerial Declaration of 14 November 2001,

WT/MIN(01)/DEC/1, 41 I.L.M. 746 (2002) [hereinafter: Doha Ministerial Declaration];

World Trade Organisation, Ministerial Declaration of 20 November 2001, WT/MIN(01)/

DEC/2 [hereinafter: Doha Declaration on TRIPS and Public Health].

9

See documents available at http://www.wipo.int/ip-development/en/agenda/.

10

See, for example, G B Dinwoodie&RCDreyfuss ‘Diversifying without discriminating:

complying with the mandates of the TRIPSAgreement’ (2007) 13 Michigan. Telecommunications

& Technology Law Review 445; G B Dinwoodie&RCDreyfuss ‘Patenting science: protecting

the domain of accessible knowledge’ in L Guibault & P B Hugenholtz (eds) The Future of the

Public Domain in Intellectual Property (2006); G B Dinwoodie&RCDreyfuss ‘TRIPS and the

dynamics of intellectual property lawmaking’ (2005) 36 Case Western Reserve Journal of

International Law 95; G B Dinwoodie&RCDreyfuss ‘WTO dispute resolution and the

preservation of the public domain of science under international law’ in K E Maskus&JH

Reichman (eds) International Public Goods and Transfer of Technologyunder a Globalized Intellectual

Property Regime (2006).

11

There are some exceptions. For example, the EPO scenarios recognise the increasing

importance of open and collaborative innovation and suggest that such developments might

lead to the abolishment of patents or to the development of technology-specif‌ic types of

patents. They do not, however, focus on the way in which such changes might be achieved in

the context of international intellectual property agreements. See EPO Scenarios (n 2) at 11, 26,

28–29, 72–75, 80, 88–90, 99.

285ACCOMMODATING USER INNOVATION IN THE INTERNATIONAL IP REGIME

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