If you have a great idea for a new product, says Marketa Trimble, be aware that somebody, somewhere in the world, could steal it.
Patents provide a way of protecting inventions but, as Trimble points out, there’s never been a way to obtain patent protection worldwide.
“Inventors must obtain patents in every individual country if they want to protect their inventions globally,” she says. “And, if you’re not a millionaire, that’s unrealistic.”
Trimble, a professor at ӽ紫ý’s William S. Boyd School of Law, has crystallized decades of international patent law research and experience into her first book, Global Patents: Limits of Transnational Enforcement, published by Oxford University Press.
“The book provides lawyers and business people who have international dealings with a good overview of the international patent system and its possibilities and limitations,” Trimble says, noting that the book has been well received by academics and practitioners from around the world seeking insight into transnational enforcement of intellectual property rights.
Since the 1880s, she says, countries have sought to make it easier for applicants to obtain patents in multiple nations. Although there has been progress, the world has yet to codify what some argue is a necessary next step: a global patent.
“The creation of a single global patent would require countries to agree on a single set of conditions of patent-ability,” Trimble says. “Not only would such an agreement be difficult to achieve, it might not even be desirable. Countries at different stages in their development and with different socioeconomic conditions have understandably different views on what should be protected by a patent and how. The different views are apparent even now, at a time when most countries of the world adhere to several international patent treaties that set the basic rules of patent-ability and provide for the streamlining of the patent application process in multiple countries.”
Historically, the lack of a global patent has been only a mild headache to inventors, chiefly because physical and logistical barriers helped thwart thefts of intellectual property. In order to see an actual patent in the past, one would have had to travel to each country’s patent office to view and copy the actual patent. The internet has changed that, of course. Computers can now display every major country’s patents for free — a boon to scofflaws looking to steal ideas. And they do.
“Many companies do business on a global scale, but they typically forfeit patent protection in many countries because of the high costs of patenting in multiple countries. Even when companies do file for patents in multiple countries, they might not obtain patent protection in some countries because of differences in standards of patent-ability,” she says.
Trimble, a native of Prague, Czech Republic, says her initial interest in patent law was stoked by trips that she took with her father. “My father was a technology reporter who covered issues of intellectual property protection. As a child I was fortunate to be able to travel with him to several factories in Czechoslovakia where he covered their technology and innovation. It was an interesting and very educational experience because Czechoslovakia was a communist country before 1989, so the economy and innovation were skewed in numerous ways, highlighting the need for effective intellectual property protection.”
After graduating from law school, Trimble worked in the government of the Czech Republic, including the Ministry of Justice. As a Czech official, she represented the country in European Union bodies and on assignment at the European Commission in Luxembourg. She went
on to obtain two additional degrees at the Law School of Charles University in Prague, then moved to the U.S. in 2004 where she obtained a master’s and doctoral degree in juridical science from Stanford Law School. She joined the faculty of ӽ紫ý’s Boyd School of Law in 2010.
Trimble is now a recognized expert on intellectual property law. She serves, for example, on the International Law Association’s Committee on Intellectual Property and Private International Law, and is the co-author of a highly regarded casebook on international intellectual property law. Her work on transnational disputes, including disputes arising from activities on the internet, is credited with assisting a wide range of parties and bodies operating in the international arena.
Trimble says her recent book aims to fill a unique niche. “Publications on international intellectual property law usually focus on the aspects of public international law — the making of international treaties and the enforcing of countries’ obligations to follow these treaties — and not on the aspects of private international law,” she says. Private international law concerns cross-border disputes among private litigants, such as between a patent owner and an alleged infringer, or a patent owner-licensor and its licensee.
Global Patents covers patent laws and litigation world-wide but focuses on the U.S. and Germany, providing a side-by-side comparison of patent enforcement in two of the busiest patent litigation countries in the world.
“The expertise of their courts is highly regarded in other countries,” says Trimble. “Patent experts follow the developments in these two countries, and courts in other countries refer to decisions from them.”
The book not only explains the limitations of international patenting, both legal and practical, but also reveals workarounds for expanding a small inventor’s patent protection. One involves using the litigation of a single-country patent to extend protection outside that country.
“Enforcement is most cost-effective when a business can use the patent of a single country to solve its worldwide disputes relating to the invention covered by that patent,” Trimble says. “The Apple v. Samsung saga is instructive. After battling in dozens of lawsuits in multiple countries, the two companies decided to shape the outcome of all their disputes worldwide according to the decisions of the U.S. courts on the contested U.S. patents.”
Another solution is to maintain disputes over multiple countries’ patents but to concentrate the litigation of the patents in only one forum; this means that one country’s decision determines the fate of patents granted in several countries for the same invention.
“This sometimes occurs in arbitration,” Trimble says. “However, as opposed to arbitration tribunals, courts have been reluctant to take cases involving multiple countries’ patents. Nevertheless, we have seen litigation, for example in the United Kingdom, in which a court decided the non-infringements of several countries’ patents.”
Of course, it is extremely costly to litigate patent matters, which is why the costs can become unbearable for many patent holders when multiple countries are involved. In addition, some nations’ courts will not accept cases involving multiple countries’ patents at all, so centralizing them in a single court may not be an option.
Despite the problems it would solve, global patent protection won’t be available anytime soon, according to Trimble.
“This is a prerogative that countries are unlikely to delegate,” she says, adding that uniform enforcement would be the next difficult issue to address if a single global patent were created.
“For a global system to be consistent, it needs to be accompanied by global agencies and courts that decide on the validity of patents with global effect,” she says. “The current developments surrounding the introduction of a regional unitary patent in the European Union show how difficult this process is, even among countries that are relatively close to each other economically, geographically, and culturally.”
