A Treat to Read on ICT Patenting

(IPRinfo 5/2010)

Perttu Virtanen
Post-doctoral researcher, program coordinator, LUT, Aalto University

Nari Lee: Exclusion and Coordination of Fragmentation -Five Essays Toward a Pluralistic Theory of Patent Right. Publications of the University of Eastern Finland / Dissertations in Social Sciences and Business Studies No 3. Joensuu 2010. 63 pp. ISBN (pdf) 978-952-61-0123-1

Nari Lee successfully defended her doctoral thesis on June 21st, 2010 at the University of Eastern Finland (UET), Faculty of Social Sciences and Business Studies. Her opponent was Professor Antonina Bakardjieva-Engelbreckt from Stockholm University and the occasion was chaired by Professor Soili Nystén-Haarala from UET. Since the Exclusion and Coordination of Fragmentation has been already reviewed academically, this article provides instead a view of what the thesis offers to the occasional reader interested in ICT patenting.

The book is not a monograph. Instead, it à la mode consists of selected peer-reviewed articles published in scientific journals and a general part, whose purpose is to provide for background of the study by explaining the motivation, methods and the sources used in the study. Usually, the general part should also glue the pieces together by providing the relevant theory and factors that justify the selection of publications in the book.

The general part accomplishes this. The underlying problem of ICT (Information and Communication Technology) patenting is according to the book, the discrepancy of the patent institution on one hand and the modern invention, production and utilization pattern of the infotech industry on the other.

While the former is unitary, based on one inventor and on a stand-alone invention, the latter is collaborative, modular and incremental and geographically dispersed, in one word: fragmented. This creates tensions between the approach adopted by the law traditionally and practice in the industry. As one solution, the coordination of different aspects of fragmentation by several means is appraised; the judicial control as perhaps the central one amongst many.

Different Aspects of Fragmentation
The subsequent articles then chart out the different aspects of the perceived fragmentation. The first article complements the general part in proposing a framework for an efficacious patent institution. The second and third articles deal with issues in ICT standards and patents.

The fourth article is perhaps the most interesting for practical purposes: it concerns the difficulties in the course of enforcement of patents arising out of the modular and incremental nature of the ICT production and distribution, particularly as regards partial or incomplete infringement. The last article provides rather a slightly different, information and knowledge management-oriented view on the same issues. In particular, it focuses on joint inventorship, or as the paper calls the actual phenomenon, ”collaborative inventive processes”.

Exclusion and Coordination of Fragmentation was never claimed to be either a textbook or a practitioner’s handbook on patenting in information and communication technology. Indeed, it shows. The book does not aim to provide the introduction or a detailed exposition of ICT patents. Neither does it supply practical guidance for the practitioners in the field as its main thrust.

Consequently, one needs a sound basic knowledge on patent law and an idea of the outline of the practice to read the book without the need to resort to other materials for support while reading.

A Uniquely Useful Introduction to a New Line of Argumentation
Instead, it provides, apart from its main message outlined above, a uniquely useful introduction to a still relatively new, but forceful line of argumentation also in the IP and patent law. The author achieves this by providing the basic concepts and core ideas of the Law and Economics approach, prominent in the USA already for three decades and gathering more and more impetus also in Europe.

If the reader is not familiar with the externalities, transaction costs and Pareto and Kaldor-Hicks efficiency when presented in the patent law milieu, the book does a useful introduction and a valuable setting of these and a wealth of other economic concepts into relevant context without losing an analytic and critical view to their value and limitations.

The merit accrues from an interesting, pluralistic approach to patent law and its institutions. The author’s approach borrows from several doctrines without falling into trap, to borrow her own words, of becoming too fragmented. The dissertation also recognizes the obvious need for further study to reduce the findings of the general and abstract level proffered in the book into more complete research findings with additional, practical policy recommendations in the future.

The author’s current position as a Program Director at Munich Intellectual Property Law Center, Germany may well be a conducive place to put these prospects into effect.

Nari Lee also holds a degree of doctor of laws, which she gained in Kyushu University, Japan in 2002. Her dissertation was titled ”Patent Eligible Subject Matter Reconfiguration and the Emergence of Proprietarian Norms – The Patent Eligibility of Business Methods”, where she discussed the normative meaning of business method as a patent eligible subject matter.

The dissertation is only available in electronic form.