Max Planck Institutefor Intellectual Property, Competition and Tax Law Wolrad Prinz zu Waldeck und Pyrmont Martin J. Adelman • Robert Brauneis Josef Drexl • Ralph Nack (Editors) Patents and Technological Progress in a Globalized World Liber Amicorum Joseph Straus 123 Wolrad Prinz zu Waldeck und Pyrmont Professor Martin J. Adelman Max Planck Institute for Intellectual Property, The George Washington University Competition and Tax Law Law School Marstallplatz 1 2000 H Street, NW 80539Munich Washington, DC 20052 Germany USA [email protected] [email protected] Professor Robert Brauneis Professor Dr. jur. Josef Drexl The George Washington University Law School Max Planck Institute for Intellectual 2000 H Street, NW Property, Competition and Tax Law Washington, DC 20052 Marstallplatz 1 USA 80539Munich [email protected] Germany [email protected] Dr. jur. Ralph Nack Bird & Bird Pacellistraße 14 80333 Munich [email protected] ISBN 978-3-540-88742-3 e-ISBN 978-3-540-88743-0 DOI 10.1007/978-3-540-88743-0 Library of Congress Control Number: 2008938335 © 2009 Springer-Verlag Berlin Heidelberg This work is subject to copyright. All rights are reserved, whether the whole or part of the material is concerned, specifically the rights of translation, reprinting, reuse of illustrations, recitation, broad- casting, reproduction on microfilm or in any other way, and storage in data banks. Duplication of this publication or parts thereof is permitted only under the provisions of the German Copyright Law of September 9, 1965, in its current version, and permission for use must always be obtained from Springer-Verlag. Violations are liable for prosecution under the German Copyright Law. The use of general descriptive names, registered names, trademarks, etc. in this publication does not imply, even in the absence of a specific statement, that such names are exempt from the relevant protective laws and regulations and therefore free for general use. Cover design: WMX Design GmbH, Heidelberg Printed on acid-free paper 9 8 7 6 5 4 3 2 1 Springer.com Preface On December 14, 2008, Joseph Straus will celebrate his 70th birthday, which is the occasion and reason for the present liber amicorum honouring his lifelong dedica- tion to and achievements in research and teaching in the field of intellectual prop- erty, especially patent law. Friends, colleagues, and pupils in more than 15 different countries in Asia, America and Europe have written 60 articles providing legal, eco- nomic and policy perspectives on the challenges raised by ‘Patents and Technolog- ical Progress in a Globalized Economy’. Among the many issues addressed in this book are fundamental questions of sub- stantive patent and utility model law (chapter 1); the relationship of exclusive rights and competition, focussing both on inherent limitations of intellectual property law (chapter 2) and limitations imposed by competition laws (chapter 3); the rapid devel- opment of specific technical fields such as biotechnology (chapter 4); employee invention law (chapter 5); questions of procedure, enforcement and liability (chapter 6); the relationship of intellectual property law to unfair competition law (chapter 7); the need for territorially limited IP laws to address trans-national circumstances (chapter 8); recent developments in national IP and competition law (chapter 9) and public policies in intellectual property law (chapter 10). The overall theme reflects Joseph Straus’s pronounced interest in the patent system and the challenges that it faces, both on a national and international level, an interest and expertise which is evidenced by his many publications in the field (listed in chapter 11). It is the authors’ sincere hope that Joseph Straus will take pleasure in reading these articles, and that the articles will provide stimulation and inspiration for his further academic work, even though, or perhaps especially because, he may not fully agree with some of the conclusions or proposals. It is the heartfelt wish of the contributors and the editors that Joseph Straus enjoy many further years of fruitful scholarly pursuits, and that he remain active on the international patent scene and continue to speak out on the needs of intellectual property. Munich/Washington, August 2008 The Editors A Portrayal of Joseph Straus Rainer Moufang 1.Introduction On December 15, 2008, one day after his actual birthday, an outstanding patent scholar is celebrating his 70th birthday. This is unlikely to be a very private party. An impressive number of friends and colleagues are expected to gather the very same day in his academic home, the Max Planck Institute at Munich’s Marstallplatz, in order to congratulate and pay tribute to this distinguished grandmaster of intellectual property law. In addition, following the venerable tradition of civil law countries to honor great legal scholars with a liber amicorum, a mélange or a Festschrift, some of us have taken the opportunity to contribute to the present birthday gift. The picture of a person which we keep in our minds is often formed in those moments where he or she impressed or touched us the most. When we think of Joseph Straus, it may well be that we hear his calm voice in a big conference amphi- theatre presenting the fruits of a deep and thorough analysis comprising one or more ‘legal discoveries’; that we see him in the center of a heated public discussion on the merits of patent protection expanding persuasive arguments with patience but firm- ness; that we observe him motivating students or collaborators with fine humor; or that we listen to very personal advice in his office long after usual working hours. Nevertheless, it is the panegyrist’s task to present the person to be honored in a more objective manner. Thus an attempt is made in the following to give account of the main stages and achievements in Joseph Straus’ academic career and to review the leitmotivs of his work. It is obvious that, due to the vast amount of noteworthy items, a selection has to be made and that also this picture is incomplete. 2. Joseph Straus’ career 1. Joseph Straus was born in Trieste, is of Italian nationality and has Slovenian roots. After having received his Law Diploma in 1962 from the University of Ljubljana, he managed to be accepted as the first Ph.D. candidate of Friedrich-Karl Beier, the Max Planck Institute’s spiritual father and long-time managing director. His doctoral the- sis, completed in 1968 at the University of Munich and published as volume no. 19 of a prestigious collection of monographs, the Schriftenreihe zum gewerblichen Rechtsschutz, focused on the law of competition in (former) Yugoslavia.1 After sev- eral years as an attorney in private practice in Tel Aviv, New York and Munich, Joseph Straus decided to return to science and to accept Prof. Beier’s invitation to 1 STRAUS, Das Wettbewerbsrecht in Jugoslawien – Eine entwicklungsgeschichtliche und syste- matische Darstellung mit Hinweisen auf das deutsche Recht, Cologne etc. 1970. VIII Rainer Moufang join the research staff of the Max Planck Institute as head of department in 1977. This was the beginning of an intense and trusting collaboration between both scholars on many occasions, including research management and preparation of expert opinions. The academic tandem co-authored numerous articles and studies, the most important of them being a monograph on the legal protection of scientific research results2 which contained a critical analysis of the Geneva Treaty on the International Recording of Scientific Discoveries and made several suggestions for accommodating scientists’ needs for protection within patent law. In the same years, Joseph Straus was responsible for the research on various topics such as European patent law, the Yugoslavian IP system and patent information. In addition he suc- cessfully managed the Max Planck Institute’s library, the world’s most complete collection of books and journals in the field of intellectual property – a small detail which shows a characteristic feature: to be prepared to commit himself, whenever necessary, also to time-demanding and energy-consuming duties even though they might promise only little reward. 2. In the last two decades of the past century, the luminosity of his scientific oeuvre continued to increase. Although he wrote on many other subjects as well – ranging from issues of patent and employees’ inventions law to issues of copyright and per- formers’ rights – his principal field of research should become the complex interface of biotechnology and patent law. From the perspective of a young Ph.D. student making his first steps in the same area, it was fascinating to watch with a mixture of admiration and incredulity how fast Joseph Straus accumulated a vast treasury of knowledge about most of the ramifications of the interface and soon became its leading international expert. Not afraid to tread on uncharted territory and instilled by a genuine interest, he entered into a fruitful dialogue with molecular biologists, plant and animal breeders, ethicists and economists. As a result he was able to properly analyze highly sophisticated interdisciplinary issues and to contribute essentially to the development of the international debate and legislative policy in this area. In recognition of these achievements, he inter alia received the Science Award 2000 of the Foundation for the German Science (Stifterverband für die Deutsche Wissenschaft). In the same period, Joseph Straus considerably expanded his teaching activities and became a truly international lecturer. He finished his habilitation at the Univer- sity of Ljubljana which appointed him as a full Professor of Intellectual Property Law in 1986: a wise decision which would benefit numerous Slovenian students for more than three decades. In 1991, following the example of his predecessor Frie- drich-Karl Beier, Joseph Straus started to teach patent law at the Ludwig Maximil- ian University of Munich and to fuel the interest of his audience - which was regu- larly composed not only of law students, but also of future chemists, biologists and physicists – in it so strongly that some of them chose it as their profession and began 2 BEIER/STRAUS, Der Schutz wissenschaftlicher Forschungsergebnisse – Zugleich eine Würdi- gung des Genfer Vertrages über die internationale Eintragung wissenschaftlicher Entdeckun- gen, Weinheim etc. 1982. A Portrayal of Joseph Straus IX careers as IP lawyers and patent attorneys. Since 1987, he furthermore developed a strong personal bond with the prestigious Cornell University at Ithaca, New York: after having spent a sabbatical leave at Cornell at the invitation of the agricultural economist William Lesser, he accepted the proposal of law professor John Barceló and Dean Russell Osgood to lecture in the law school’s international speakers pro- gram and later to teach a course on international IP in the law school curriculum. His course was very popular among regular Cornell J.D. students and the growing number of international students at Cornell. As a Visiting Professor, he continued to offer the course for almost ten years. Joseph Straus also played an increasingly active role in national and interna- tional IP associations as well as in scientific organizations which entrusted him with key functions. He inter alia became President of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), Chairman of the Programme Committee and two Special Committees of the Inter- national Association for the Protection of Industrial Property (AIPPI) and Chairman of the Humane Genome Organisation (HUGO). Notwithstanding all these achievements and the growing international reputa- tion, Joseph Straus also experienced difficult moments in these years: things did not develop that well on the home front. Due to the prolonged uncertainty after the retirement of F. K. Beier, the Max Planck Institute had to endure stormy weather and even its future was at stake. This caused deep concerns about the future of patent law research in Germany and comprehensible personal disappointment to a man who had proven his loyalty to the Institute on numerous occasions. 3. However, with the beginning of this millennium new perspectives arose when the Max Planck Society endorsed a large-size vision for the Institute preserving and strengthening, on the one hand, its key pillars composed of the different branches of industrial property and copyright and expanding, on the other hand, its research into the fields of antitrust, tax, and accounting law. In its new building at one of Munich’s most beautiful locations between the Hofgarten and the Marstallplatz, the rebaptized Max-Planck-Institute for Intellectual Property, Competition and Tax Law marched to a new horizon with a board of five directors. Together with his colleagues Gerhard Schricker, Josef Drexl, Reto Hilty and Wolfgang Schön, Joseph Straus, who had meanwhile been appointed Scientific Member of the Max Planck Society and Professor of Law at the University of Munich, set out to restructure the research agenda of the Institute and to conceive innovative projects. Hard-working, patient and efficient also in his function as the Institute’s Managing Director from 2002 to 2004, he succeeded to rebuild and strengthen the Institute’s vast international net- work of national and foreign scholars – inter alia the MPI’s Alumni Association was founded in 2002 – and to attract and motivate a team of bright collaborators, super- vising numerous Ph. D. candidates. Patent law research once again became a center of gravity, a highly appropriate development for an institute geographically located so close to major players in the field such as the German and the European Patent Offices. X Rainer Moufang One of Joseph Straus’ greatest deeds is his leading role in establishing and man- aging the Munich Intellectual Property Law Center (MIPLC). Jointly administered by the Institute and three academic partner institutions, i.e. the George Washington University Law School, the Technical University of Munich and the University of Augsburg, the Center is providing postgraduates in the framework of a one year program with the necessary knowledge and skills to deal with intellectual property in a global context at the most sophisticated level. The courses which cover all areas of IP law but also include topics from related fields such as economics and business administration are given in English by the members of the MIPLC faculty, an inter- national network of IP scholars and experienced practitioners. Since the birth of the Center in 2003, Joseph Straus has served as Chairman of its Managing Board. His tireless efforts, his intimate knowledge of foreign, in particular US, university cur- ricula and the selection of highly diligent collaborators as program directors proved to be decisive factors. The Center’s international focus and optimal working condi- tions comprising individual one-to-one tutorial sessions have made it a full success. Five classes have already finished the course which usually culminates in a solemn graduation ceremony in Augsburg’s Gold Hall. Since 2002, Joseph Straus has also served as the Marshall Coyne Visiting Pro- fessor of International Law at the George Washington University Law School. Every spring, he has traveled to Washington, D.C. to teach a popular course in Chemical and Biotech Patent Law, or to co-teach that course with Professor Martin Adelman, the Co-Director of the Intellectual Property Law Program at George Washington. In his capacity as the Marshall Coyne Visiting Professor, he has also given a number of well-received lectures on intellectual property law and interna- tional trade. Amazingly, besides all these efforts, Joseph Straus has continued to publish awealth of articles and studies – his current bibliography contains more than 300entries –, to edit or co-edit several periodicals such as GRUR, GRUR Int. and IIC as well as collections of monographs and commentaries, to act as consultant to numerous national bodies and international organizations, and to give an excep- tional number of lectures around the globe, inter alia in his functions as a Visiting Professor of the Graduate Institute of Intellectual Property in Taipeh and as a Dis- tinguished Visiting Professor of Law at the University of Toronto. His outstanding personality and work is reflected by an impressive quantity of high honors and awards. Joseph Straus received two doctors honoris causa from the University of Ljubljana and the University of Kragujevac, the Grand Cross of Merits of the Federal Republic of Germany, the International Venice Award for Intellectual Property and Medals of Merits from AIPPI and ATRIP. He became Honorary Professor of two Chinese Universities (Tongji University, Shanghai and Huazhong University of Science and Technology, Wuhan) and Honorary Director of their Intellectual Property Institutes. Furthermore, he is Member of Honor of AIPPI as well as Member of several European Academies of Sciences and Art. A Portrayal of Joseph Straus XI 3. Leitmotivs in the work of Joseph Straus 1. Most of us are familiar with the fundamental debate on the merits of intellectual property protection in general and of the patent system, in particular. It overshad- ows many specific issues such as the adequate treatment of innovations in biotech- nology or software development. It is at the core of the proper evaluation and worldwide implementation of the TRIPS agreement. And it forms the decisive albeit sometimes implicit basis on which intellectual property scholars and practi- tioners perform their daily work. Whenever Joseph Straus contributed to this debate – and he did so on countless occasions –, he did not hide his conviction that the pat- ent system may serve as an essential and highly useful market-economy tool in fos- tering innovation, facilitating technology transfer and disseminating valuable infor- mation. Far from the uncritical belief, this view was always rooted in an extensive study of modern investigations and an immense knowledge of economic and polit- ical facts. He has shown that the famous position taken 50 years ago by the econo- mist Fritz Machlup – according to whom there was no direct and conclusive evi- dence on the social value of the patent system and that the safest policy conclusion was to ‘muddle through’, either with a patent system, if it already existed, or with- out it, if it did not yet exist – is nowadays hardly tenable and that, although there may not be mathematical certainty, the reached degree of plausibility of overall social benefits is extremely high. Being well aware of the problems caused by the recent dramatic increase of patent applications worldwide, he has refused to accept its negative label ‘global warming of patents’ with plain words:3 It is not greenhouse gases that are at stake, rather it is the fuel that powers the engine moving the global economy. As with all fuels, it will surely contain some debris, which has to be filtered out in order to optimize the combustion performance of the engine. The latter is definitely in need of fine lubricants. As the final caveat demonstrates, Joseph Straus has never neglected the need for a careful balancing of the patent system, which should take the interest of society at large into account and must tailor the scope of protection in a manner commensu- rate with the inventor’s genuine contribution in order to avoid stifling overprotec- tion. 2. In the last thirty years, the landscape of the international patent system has radi- cally changed. At the beginning of this period, worldwide patent law harmoniza- tion appeared to be intrinsically linked to the venerable Paris Convention and the conception of patent law as it had evolved in Western industrialized countries was under heavy pressure. Its beneficial role for economic development had been questioned by an influential UNCTAD study and demands for restrictive measures such as compulsory licensing and domestic working of patents were on the interna- tional agenda. In addition, socialist countries firmly advocated the grant of inven- 3 STRAUS, Is There a Global Warming of Patents?, 11 JWIP 58, at 60 (2008).