HOW PATENT INFORMATION CAN CONTRIBUTE TO SUSTAINABLE DEVELOPMENT

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1 HOW PATENT INFORMATION CAN CONTRIBUTE TO SUSTAINABLE DEVELOPMENT Abstract Jean-François Luc, Manager, Health Canada, Wayne M. Shinya, Senior Policy Analyst, and John Szabo, Economist, Industry Canada* Intellectual property rights are an important driver of innovation and productivity in the knowledge-based economy. In particular, intellectual property rights in the form of patents may also be a valuable source of technical and scientific information and ideas on how to address environmental and health and safety concerns associated with industrial activity. In the network age, many small- and medium-sized enterprises in the resource sector, researchers, and government agencies concerned with resource development, have not taken full advantage of this unique and valuable source of information. * The opinions expressed in this article are those of the authors and do not necessarily reflect the views of Health Canada, Industry Canada or the Government of Canada. Those seeking additional information about BIX should contact Mr. John Szabo at szabo.john@ic.gc.ca. 1. Introduction 1.1. Purpose The United Nations Development Programme (UNDP) Human Development Report 2001 underscores the fact that the technology revolution and globalisation are creating a network age and that is changing how technology is created and diffused. The Report also emphasises the linkage between innovation and technology and human development, most notably in the developing world (UNDP, 2001). The purpose of this article is first, to highlight a Canadian Internet-based initiative known as Business Intelligence Express (BIX) designed to promote innovation and productivity in the minerals and metals processing industry through greater knowledge of and access to information derived from intellectual property rights (IPRs) and secondly to highlight the potential use of patent information to promote sustainable development in the minerals and metals industry Intellectual Property Intellectual property (IP) may be broadly defined as the legal rights which may result from intellectual activity in the industrial, scientific, literary and artistic fields (WIPO, 2001a). In this context, it is important to note that whereas land and personal property such as an automobile are tangible in nature, IP deals with intangible rights. If the aforementioned automobile is physically destroyed in an accident, for example, the IPRs embodied in the automobile (e.g. patents, trademarks, industrial designs, copyright, etc.) and that belong to the automotive manufacturer and others (e.g. parts suppliers) continue unchanged. 1

2 1.3 IPRs and Economic and Social Development Secure property rights are a characteristic of good governance and a pre-condition of economic growth. 1 IPRs help to promote economic and social development by securing the property rights of creators that result from their intellectual activity in the industrial, scientific, literary and artistic fields. National IP regimes are said to protect industrial property 2, including inventions, for two basic reasons. First, to give statutory expression to the moral and economic rights of creators in their creations. Second, to promote, as a deliberate act of government policy, creativity and the dissemination and application of its results, and to encourage fair trading: this contributes to economic and social development (WIPO, 2001a). Industries that produce goods and services that are protected by various IPRs look increasingly at their IPRs as a source of competitive advantage (Rivette and Kline, 2000). For their part, governments are increasingly interested in IPRs in terms of how they can contribute to innovation and productivity, long-term economic growth and cultural development and, ultimately, an improved quality of life in the knowledge-based economy (KBE) Policy Objectives of Patent Laws Patents deal with matters related to science and engineering. They play an important role in promoting innovation and productivity by encouraging the creation and development of new technologies. Without the legal protection afforded by patents, ideas would have little legal protection. As a result, as soon as a product implementing the idea enters the market, anybody could, in theory, copy it and compete with the original producer without having incurred the original cost of invention or product development (Vaver, 1997). To obtain a valid patent, the invention must generally be new, useful, and non-obvious to a person skilled in the art. Inventions usually take the form of a product, apparatus, process or composition of matter. In some jurisdictions, patents may be issued for software and for methods of doing business. The majority of patents are in relation to improvements to existing patented inventions. To give effect to the two broad policy objectives designed to protect industrial property, patents offer inventors monopolies on their creations for specific periods (e.g. 20 years in Canada) in order to provide incentives for research and development (R&D) and product development. At the same time, they also seek to promote the public good by adding to the stock of knowledge in the public domain. As such, patent documents (patents and patent applications) are made public specifically to promote the sharing of knowledge (CIPO, 2000). In this context, each patent document describes a new aspect of a technology in clear and specific terms for anyone to read. To this end, patent documents provide a capsule description of a particular technology; background history of a problem; how the new invention overcomes the problem; a complete description for making the invention; and any conditions under which the invention will not work (CIPO, 2000). Thus, an equitable and modern patent system can be an incentive for inventiveness and innovative activity and can also create a favourable climate for the transfer of technology by means of the security it provides for the patentee (WIPO, 2001a). 1.5 Small- and Medium-sized Enterprises and IPRs 2

3 Technological advances contribute to the international competitiveness of an industry from a cost and quality control perspective. Research has suggested that there is a close correlation between the use of IPRs information by an industry and its innovative capacity. Moreover, studies have indicated that businesses, in particular, small- and medium-sized enterprises (SMEs) 3, have not been actively seeking patents or other IPRs, or making effective use of them as a source of strategic competitive information. 2. Minerals and Metals Processing Industry 2.1 Canadian Minerals and Metals Processing Industry The Canadian minerals and metals processing industry is composed of more than 8,000 companies involved in smelting and refining, plating, and fabrication. The industry also includes a number of collaborative organisations that brings the industry together with university and other researchers. While some of the companies in the industry are large vertically integrated firms, the vast majority may be described as SMEs. While they rarely see the value of having greater access to information found in patent documents, these same firms often shield their operating processes from outside visitors for competitive reasons (MLynch & Company, 1996). Research has also indicated the primary motivating factor for operational improvements, aside from environmental considerations, was increasing pressure from end-users for improved quality and lower costs. These latter considerations are generally addressed at the equipment manufacturer level (MLynch & Company, 1996). 2.2 Use of Patent Information Increases Along the Processing Chain The use of information derived from patent documents by the industry increases as you move along the processing chain into areas such as materials research. Large firms were identified as having a variety of needs in relation to patent documents and, for the most part, these firms have adequate access to such information. Research did suggest the need for an educational tool that could demonstrate how to use patent information for strategic business planning purposes (MLynch & Company, 1996). 3. Minerals and Metals Business Intelligence Express (BIX) 3.1. Objectives of BIX Launched in 1998, BIX focuses on the firm, not the output (innovation), and is driven by two complementary objectives. First, it is underpinned by research findings of the Organisation for Economic Co-operation and Development (OECD) on innovation and technology diffusion dynamics within the firm (OECD, 1997). Based on this research, it was postulated that one of the possible roles of government could increasingly be to develop the next generation of practical tools that would assist firms to improve their awareness about IP and their IP management performance. Within this policy framework BIX ( aims to help users: Keep abreast of external technical developments and/or decisions by competitors that represent potential business threats and opportunities by tailoring their patent search activities in order to keep track of emerging technologies or specific competing inventors and/or companies. 3

4 Evaluate new product, process, or collaboration prospects created by external science and technology activities in time to permit appropriate responses. For example, by evaluating laid-open patent applications for new inventions and assessing the impacts of these inventions on their business or to determine the possibilities for a joint partnership or licencing arrangement with the patentee. Αnticipate and understand science and technology-related shifts or trends in their environment in preparation for organisational planning and strategy development by monitoring developments taking place in foreign markets and assessing the impacts on their domestic and/or export markets. 3.2 Global Reach of BIX The major sources of patents are the industrialised economies of the European Union, Japan, and the United States. BIX provides the user with an online source of freely available patent information relevant to the minerals and metals processing industry filed by a variety of applicants such as mineral companies, academic institutions and research institutions with Canadian Intellectual Property Office (CIPO). 4 The CIPO patent database is not limited to Canadian inventions. In fact, the majority of patents on the CIPO patent database involve inventions that originate outside Canada. A keyword may be used to access the CIPO database in the Search Now section of BIX. The keyword may be based on either a list of terms related to minerals and metals selected from International Patent Classification (IPC) codes 5, or based on the interest of the user. For example, entering the name of a specific country as the keyword in the BIX search will highlight those patent documents in the CIPO database for which a citizen, company or institute of that country is the owner or inventor. 6 BIX also allows the individual to have access to patent information that may not be available in trade journals for a number of years until after a patent has been issued. 7 Finally, BIX links the user to 29 on-line IP offices in Asia, Europe, South America, and the United States Enhancements to BIX In order to enhance the importance of the competitive intelligence aspect of IPRs information, and to provide educational tools, new interactive features were introduced to BIX. These features include: IP Quiz: allows users to test their basic knowledge of IPRs, as well as provide them with an opportunity to learn the basics of this information in advance of their taking the IP Diagnostic. For example, the IP Quiz provides information on such topics as to the nature of IP and the scope of patent protection. IP Diagnostic: an interactive questionnaire designed to help users make a quick appraisal of the strengths, weaknesses, potential risks and blind spots of their IP management. In this context, the IP Diagnostic provides users with links to additional sources of information about IPRs that are based on their answers. For example, if the IP Diagnostic reveals that the user is weak in the area of IP strategy and policy, it will direct the user to web sites designed to address this weakness. 8 Patent Alert & Trade-mark Alert: sends a monthly message to registered individuals 4

5 informing them of all new patents and/or trade-marks that have been either granted or laidopen that match their area of interest. Depending on the parameters of the search, the user may receive updates related to a variety of products and processes (e.g. copper, gold, continuous casting etc.) contained in either the patent document itself or from the abstract. The search may also be based on the name of the inventor or owner or the title of the patent/trade-mark. Alternatively, the user may select a product or process from a list of predefined IPC codes. 9 Patent Filing Advisor (PFA): this feature help users understand the key issues involved in preparing, filing and prosecuting patent applications. The PFA is a collection of 18 questions with descriptions of considerations and Internet resources which potential patent applicants may take into account in advance of filing their application. For example, the PFA allows the user to consider such topics as the current status of the innovation, the profit potential of the innovation, and possible infringement issues that may arise in connection with the patent application. 4. Using IPRs Information to Promote Sustainable Development 4.1. Patent Information may Contribute to Addressing Competitiveness, Environmental, and Health and Safety Concerns Sustainable development seeks to promote economic development in a manner that minimizes or avoids the negative impacts of economic development on communities, workers and the environment today and in the future. Although the focus of BIX was the Canadian minerals and metals processing industry, BIX also allows the individual user to access patent information that has the potential to address many concerns associated with other stages in the mineral or metal life cycle. While companies are increasingly looking at patents and other IPRs as a source of competitive advantage, little attention has been paid to the potential use of information derived from patent documents to address some of the environmental and health and safety issues associated with minerals and metals Some Examples Each stage in the life cycle of a mineral or metal from exploration, mining, concentrating, smelting and refining, minerals and metals-based semi-fabricating, metal fabricating, use, recycling and disposal can have a variety of potential impacts on communities, workers, and the environment. As noted earlier, one of the broad policy objectives underlying patent laws is to add to the stock of knowledge in the public domain. As such, others are free to incorporate this information into new inventions in a manner that does not violate the patent claim (Maskus, 2000). The expanding reach of the Internet and products such as BIX allow companies, in particular SMEs (at every stage of the minerals and metals industry), researchers and government agencies in Canada and abroad concerned with resource development to quickly access the latest technical and scientific information contained in patent documents from around the world. This information has the potential to directly address competitiveness, environmental and health and safety concerns. In other cases, such information may provide a new perspective on a problem that may result in an innovative step to address the challenge facing the SME, researcher or government 5

6 agency. At a minimum, the patent information may help a researcher avoid expending time and resources replicating work already undertaken by others (CIPO, 2000). For example, a mining operation that performs on a sustainable basis must not only operate profitably, it must also do so in a manner that addresses environmental and health and safety concerns. Because every mining operation is in some way unique, it is difficult to anticipate the type of patent information that may be useful to the mine operator. By using BIX, the mine operator would have access, for example, to information about a US-Australian invention that is aimed at increasing the economic viability of a mining operation by providing for a computer processor system for controlling the operation of the mining system. 10 From a Canadian patent document, the same mine operator would also have access to technical information on how to improve the environmental performance of the mining operation by establishing a process for stabilising mine tailings. 11 As one moves along the processing chain, the potential value of patent information is less dependent on the unique conditions of a mining operation and more on the willingness of the manufacturing facility to employ the technology. For example, patent information available via BIX associated with the semi-fabricating and smelting and refining stages include an Austrian invention of a process for the disposal of organic and inorganic substances. The technology can be used to combine scrap metal and inorganic dust in order to produce pure materials such as steel, while at the same time reducing emissions such as dioxins and furans. 12 Environmental and health and safety concerns are often associated with mineral production. For example, an American invention outlines a method to reduce the metal sulphide content of mine tailings and to convert it into soil suitable for plant growth. 13 Another American invention provides a technology to fabricate metal products that requires the properties of lead-containing alloys. As these alloys are coming into disfavour due to health and environmental considerations, this technology allows for the production of lead-free materials. 14 In the context of health and safety, a Canadian proposes a new approach to controlling underground mine ventilation air systems by using doors that can shut down, isolate and control zones or levels of a mine. 15 Similarly, an American patent sets out a system that allows for the detection of unsafe conditions within the rock strata being drilled and provides for appropriate warnings of threatening operations and the opportunity to correct or prevent hazardous events. 16 Metals recycling is a global industry and embodies the spirit of sustainable development. Among the patent documents promoting metals recycling include a US-New Zealand invention which allows the user to recycle hydrogen cyanide from a cyanide-containing slurry. The technology has the benefit of recovering both precious metals and cyanide, thereby increasing the company s profitability while reducing its need for cyanide. 17 Yet another invention, this time from Japan, provides for a process and apparatus that removes the majority of paints and pigments from empty aluminum cans, thereby allowing for the recovery of aluminium with very few impurities. 18 6

7 5. Looking Ahead 5.1. Expanding the Scope of BIX Since the release of the minerals and metals BIX, Industry Canada has launched a version of BIX aimed at the biotechnology industry (known as Bio Bix, it may be found at More recently, the forest products sector s IPC codes have been integrated into Industry Canada s BIX, thereby expanding this information product s sectoral coverage. Industry Canada is interested in making BIX a truly cross-sectoral product where the IPC codes of all the major industrial sectors may be accessed to help refine IP searches. Moreover, Industry Canada is willing to explore opportunities to collaborate in the international deployment and further improvement of BIX, or portions thereof. 6. Conclusion 6.1. IPRs Information can Promote Innovation and Productivity Governments are increasingly interested in how IPRs can contribute to innovation and productivity, long-term economic growth and cultural development and, ultimately, an improved quality of life in the KBE. This was underscored in the Human Development Report 2001, which demonstrated the linkage between innovation and technology and human development. Improved awareness and use of IPRs information by SMEs, researchers and government agencies can contribute to greater industry innovation and productivity. Research undertaken as part of BIX indicated that the IPRs information needs of an industry may be too varied to create a single approach to IPRs information management. Simply increasing on-line access to IPRs information may not be sufficient to meet the goals of using IPRs information as a driver of innovation and productivity. BIX addresses this challenge by seeking to influence the management of the individual firm in ways that promote a culture of innovation within the firm. It does this by helping the individual firms that compose the Canadian minerals and metals processing industry, in particular, SMEs, to have a better understanding and appreciation of the potential use of information derived from IPRs as a source of strategic business information. It is up to the individual firm to decide how to best take advantage of the IPRs information available via BIX IPRs Information in the Form of Patents can Promote Sustainable Development At the same time, information derived from IPRs, most notably from patent documents, may also be a valuable source of the latest technologies that can help SMEs, researchers and government agencies concerned with resource development to identify a new technology that may help address environmental and health and safety concerns associated with the mineral or metal life cycle. Where a specific solution is not identified, the patent information gleaned from BIX still has the potential to help the user develop a new solution to a problem in a manner that respects proprietary rights, and avoid replicating work already undertaken by others. The growing body of publicly available IPRs information has been likened to the ancient library of Alexandria (Rivette and Kline, 2000). This unique and freely available source of information can contribute to building the technical capacity of SMEs, researchers, and government agencies. Yet little attention has been paid to the potential use of patent information to operate and maintain a mineral operation in an efficient, productive and sustainable manner. It is hoped that 7

8 this article will contribute in some small measure in bringing to the attention of the reader the potential of BIX and patent information to contribute to the sustainable development of the minerals and metals industry. References Canadian Intellectual Property Office (CIPO), A guide to patents. Ottawa, Canada, p.1. IMD International, The world competitiveness yearbook Lausanne, Switzerland. Maskus, Keith E., Intellectual property rights in the global economy. Institute for International Economics, Washington, p.41. MLynch & Company, Results of the user needs analysis: a market research report for patents on-line. December. Organisation for Economic Co-operation and Development (OECD), Diffusing technology to industry: government policies and programmes. Volume V, No. 33, Paris. Rivette, K. G. and Kline, D., Discovering new value in intellectual property. Harvard Business Review, January-February, p.54. United Nation Development Programme, Human development report 2001: making new technologies work for human development, New York, Oxford University Press. Vaver, David, Intellectual property law: copyright, patents and trade-marks. Concord, Ontario, Irwin Law, p.113. World Intellectual Property Organization, Intellectual patent classification guide. Internet version, World Intellectual Property Organization, 2001a. Intellectual property reading material. WIPO Publication no. 476(E), Internet version, Endnote 1 The World Competitiveness Yearbook 2001, for example, analyses competitiveness using 286 statistical indicators for 49 industrialised and emerging countries. Five of the statistical measures grouped under the input factor dealing with Infrastructure address the treatment of patents, including a measure looking at the protection of patents and copyright (IMD International, 2001). 2 The term industrial property also covers industrial designs, trademarks, service marks, commercial names and designations, including indications of source and appellations of origin, and protection against unfair competition. 3 For the purpose of this article, firm size is defined according to the definition used by the federal department of statistics (Statistics Canada), i.e., among non-service firms, small companies have between 1 and 99 employees, medium firms have between 100 and 499 employees while large firms have 500 or more employees. Among the service sector, small firms are defined as those with 1 to 49 employees, medium-sized firms have between 50 and 249 employees and large firms have 250 or more 8

9 employees. 4 CIPO is a federal agency and part of Industry Canada. It is responsible for the administration, processing and granting of most IPRs in Canada. In this context, BIX provides the user with background information of the relevant patent. This information typically includes the patent title, the name of the owner(s) and/or inventor(s), the laid open date and abstract, along with a variety of images. To obtain a certified copy of the patent, the user must contact CIPO and pay a fee of CDN $35.00 plus CDN $0.50 per page. 5 According to the World Intellectual Property Organization (WIPO), IPCs provide for a common classification for patents for invention including published patent applications, inventors' certificates, utility models and utility certificates. The Classification, being a means for obtaining an internationally uniform classification of patent documents, has as its primary purpose the establishment of an effective search tool for the retrieval of patent documents by patent offices and other users, in order to establish the novelty and evaluate the inventive step (including the assessment of technical advance and useful results or utility) of patent applications. (WIPO, 2001). 6 Other criteria on which a search may be based include the name of the inventor, the abstract and the title of the patent. 7 Indeed, about 70 percent of the information contained in patents does not appear in any trade journal for at least five years after the patent has been granted. At least 50 percent of this information is never published in mainstream technical literature (CIPO, 2000). 8 Examples include web sites aimed at Seeking Cost-Effective Patents ( and Copyright on the Internet ( 9 Patent Alert is capable of providing updates based on boolean searches (i.e. using more than one search term such as mining and environment ). 10 Apparatus and Method for Continuous Mining, Patent Application CA Process for Stabilising Mine Tailings, Patent Application CA Method of Disposing of Organic and Inorganic Substances and a Plant for Carrying out the Method, Patent Application CA Tailing Reclamation Method Including Conversion of Tailings into Soil Suitable for Plant Growth, Patent Application CA Machinable Lead-Free Wrought Copper-Containing Alloys, Patent CA Balanced Ventilation Doors, Patent Application CA Method for Characterisation of Rock Strata in Underground Mining Operations, Patent Application CA Cyanide Recycling Process, Patent Application CA Method and Apparatus for Used Aluminium Can Recycling, Patent Application CA