Developments of Substantive Patent Law Harmonization

WIPO PATENT AGENDA

• Initiative launched by Director General; approved by WIPO Assemblies in September 2001

• Initiate discussions to formulate a strategic blueprint for shaping the future international patent system, including all interests involved

• Intended to complement and strengthen ongoing activities, e.g. substantive harmonization of patent law, reform of the Patent Cooperation Treaty

WIPO Patent Agenda

Why a patent agenda?

• Current efforts by countries in modernizing their patent systems have occurred in a largely uncoordinated and passive manner

• Need to review and improve the international patent system to make it simpler, more user friendly, cost effective and secure

• Need to simplify manner of obtaining patent protection globally

• Need to cope with large increase in patent filings

WIPO Patent Agenda

WIPO Patent Agenda

Objectives

• Develop the international patent system to become an instrument for promoting the creative potential for economic benefit internationally– including in developing countries

• Short term - find solutions for current workload difficulties in large and small patent offices

• Longer term - develop mechanisms and programs to ensure effective access for users to obtain, maintain and enforce patent rights

WIPO Patent Agenda

Next steps

• Governments and users were invited to comment by mid-February 2002 to identify and prioritize measures

• Discussion paper to be prepared by WIPO for consideration by WIPO Assemblies in September 2002– general policy issues– functional and operational issues– user issues– possible options for the future

PCT REFORM

• August 2000: Proposal by USA for reform in 2 stages• Proposed 1st stage – referred by Assembly to

Committee and WG: – simplification of the system– streamlining of the procedures– alignment of PCT requirements with those of the

PLT• Proposed 2nd stage – work yet to commence:– comprehensive overhaul of the entire PCT system

PCT reform

General objectives

• Simplify and streamline procedures• Reduce costs for applicants• Enable Offices and Authorities to meet workload

and maintain quality• Avoid duplication of work among Offices• Meet needs of large, medium and small Offices• Balance applicant and third party interests• Assist developing countries, especially with IT• Conform to PLT and coordinate with SPLT

PCT reform

Particular initiatives

• Modified time limit in Article 22(1) (already adopted)

– no IPE if applicant merely wants to “buy time”

• First proposals to WIPO Assemblies in 2002:

• Expanded international search system

• Automatically make all possible designations

• Conformity with PLT, particularly:

– extension of priority period

– extension of national phase entry time limit

Patent Law Harmonization

• Negotiations 1985 to 1991– Diplomatic Conference resulted in no treaty

• Patent Law Treaty (PLT) (formal and procedural matters) adopted by Diplomatic Conference in June 2000

• Draft “Substantive Patent Law Treaty” (SPLT) now being discussed by SCP– 2 SCP meetings in 2001; 2 in 2002

Patent law

PLT

Patent Law Treaty (PLT)

• Harmonizes and simplifies formal requirements for national and regional applications and patents– especially filing date requirements– incorporates PCT “form or contents” requirements– express provision for electronic filing– standardized Forms– safeguards against unintentional loss of rights– does not cover substantive patent law– a CP can be more liberal, except for filing date

• 3 ratifications at this stage; 10 are needed for entry into force

SPLT

Substantive harmonization(SPLT)

• Issues being addressed: definition of prior art, novelty, inventive step/non-obviousness and industrial applicability/utility, sufficient disclosure, drafting and interpretation of claims– including disclosures on the Internet

• Interface with PCT and PLT• Other issues on the table, but postponed: first-to-

file, early publication, post-grant opposition• Provisions at three levels: treaty, regulations

(harmonizing laws), practice guidelines (harmonizing Office practices)

SPLT: agreement in principleon a number of provisions

• Scope of the SPLT: – exclusion of infringement issues, except for

the provisions on interpretation of claims, which would apply in infringement cases

– covers national and regional applications, international applications when they have entered the national phase

• Right to the patent• Application– abstract should merely serve the purpose of

information SPLT

SPLT: agreement in principleon a number of provisions (ctd)

• Amendment and correction of applications– majority: no inclusion of abstract for disclosure– possibility of correction of granted patents?

• Definition of prior art: everything made available before the filing or priority date– position of the USA:

» no opposition in principle» inclusion of secret prior use (loss of rights)

– earlier applications:» international applications under the PCT» application to novelty only SPLT

SPLT: agreement in principleon a number of provisions (ctd)

• Sufficiency of disclosure– discussion on “undue experimentation”– deposit of biological material

• Claims– “support” versus “written description”

requirement• Definition of novelty• Definition of inventive step/non-obviousness

SPLT

SPLT

SPLT: Some debated issues

Patentable subject matter and technical character

• Article 12(1) and (5)

• USA wish broad provision

• European countries wish to include only inventions which have a technical character

• What should be the general rule and what the exception?

• TRIPS Article 27.2 and 3 exceptions

• Deep harmonization?

SPLT: Some debated issues (ctd)

Exceptions and grounds for refusal/invalidation

• Proposals by Brazil and the Dominican Republic on Articles 2 and 13/14

• Support by a number of developing countries, opposition by some industrialized countries

• Topics addressed: public health, access to genetic resources, traditional knowledge, folklore

• Position of the USA

SPLT

SPLT: Some debated issues (ctd)

Equivalents and declarations made during prosecution (file wrapper estoppel)

• Principle of equivalents agreed in principle• Discussion on which methodology to apply and at which point in time to take into account equivalents• Some discussion on file wrapper estoppel

SPLT

SPLT: Some debated issues (ctd)

Industrial applicability/utility

• Industrial applicability versus utility• WIPO had, in 2001, questioned the need for a

distinct requirement. This was not accepted by the SCP

• Possible compromise text or no deep harmonization?

• Not a “make or break” issue

SPLT

SPLT: Some debated issues (ctd)

Grace period

• Was a major blockage to the conclusion of the 1991 Treaty

• In SCP, 3 rounds of discussion so far:– general information by countries– delinkage from other issues– discussion of more detailed issues (scope of a

grace period, duration, third parties rights, etc.)• No clear opposition against grace period

SPLT

SPLT: Some debated issues (ctd)

Additional requirements relating to description

• “technical”• citation of prior art (“mandatory” versus

“preferable”)• presentation of invention as a solution to a

problem• “best mode” requirement

SPLT

SPLT: Working Group

• Established by SCP/6 on a proposal by the USA• First session held during SCP/7 (May 2002)• Topics under discussion:– unity of invention– link of claims– number of claims– requirement of “clear and concise” claims– procedures to treat complex applications

• Second session to be held in November 2002

SPLT

Where to go from here?

• Agreement in principle on a number of issues, biggest hurdles are subject matter and proposals relating to Articles 2 and 13/14

• Deep harmonization?• Form of legal instrument?• Outcome will depend on global package– Interest of different countries/regions– different climate than in 1991

• Interest of users• Alternatives

SPLT

Thank you

Tomoko MiyamotoSenior Legal Officer, Patent Law Section

Patent Policy DepartmentWorld Intellectual Property Organization (WIPO)

tomoko.miyamoto@wipo.int