EU Community Patent, EU Community Patent, Substantive Patent Substantive Patent Harmonization and Harmonization and

PCT RevisionPCT Revision

D.C. Patent Lawyers Club D.C. Patent Lawyers Club March 10, 2002March 10, 2002

Albert Tramposchalbertt@burnsdoane.com

Counsel, Burns Doane Swecker & Mathis LLP

Alexandria, VA

Co-Director, Intellectual Property Program

George Mason University School of Law, Arlington VA

Former Director of Industrial Property Law

World Intellectual Property Organization (WIPO)

International Computer International Computer Legislation?Legislation?

You cannot obtain one that is made abroad Even if it has identical specifications and meets

identical requirements The cost is determined (no competition) Ownership is taxed yearly It stops working on a date certain, whether or

not you are done with it Sanctioned under WTO Agreement!

At the conclusion of this At the conclusion of this program, please deposit program, please deposit

your illegal Japanese laptop your illegal Japanese laptop computers in the box by the computers in the box by the

door.door.

International International Patent Patent LegislationLegislation

You cannot obtain one that is made abroad Even if it has identical specifications and meets

identical requirements The cost is determined (no competition) Ownership is taxed yearly It stops working on a date certain, whether or

not you are done with it Sanctioned under WTO Agreement!

Free Trade in IP Goods & Free Trade in IP Goods & Services?Services?

Uniformity of regulation - Harmonization

Economies of scale - mutual recognitionNon-discrimination - same rights no

matter where obtained

Intellectual = Personal or Real?Intellectual = Personal or Real?

Real Property – Governed exclusively by national law– Unique to the territory, not movable

Personal Property (goods)– Subject to international law– Not unique to the territory, movable

Intellectual Property Protection– Governed exclusively by national law– Not unique to the territory? Movable?

A Question of A Question of National Sovereignty?National Sovereignty?

Internationalization of IP Law

1880’s - Paris and Berne Conventions

Globalization of IP Law

1990’s – WTO and TRIPS Agreements

A Patent Diversion:A Patent Diversion:

The New EU The New EU Community PatentCommunity Patent

24902490thth Council Meeting Council Meeting MinutesMinutes

Framework adopted for Community Patent:– File in national office or EPO; examine by EPO– Jurisdictional (Court) System– Languages and Costs– Role of National Patent Offices– Distribution of Fees

Review 5 years after first patent granted

CourtsCourts

Community Patent Court to be established– As of 2010– Under Court of Justice– In Luxembourg– First instance and appeals

In meantime, each country designates a court

LanguagesLanguages

Up to grant, English, French or German, as in EPO (claims in all three)

Upon grant, translate all claims into all official languages of EU (now 11; could be up to 19, but countries can decline translation)

?? Also, enlarged abstract, or first three pages of application ??

Cost of the Community Cost of the Community PatentPatent

About €25,000 ($27,000) for up to 25 states

About half the cost through the EPO in 8 states

Other ResourcesOther Resources

There is an EU Press Release at http://www.eu2003.gr/en/articles/2003/3/3/2129/

The minutes of the Council Meeting, containing the outline of the decision on the Community Patent, are attached

International Patent International Patent HarmonizationHarmonization

Began in 1984 (grace period discussions)Committees of ExpertsFailed Diplomatic Conference in 1991U.S. withdrawal from discussionsProcedural Harmonization:

– Committees of Experts and “SCP”

Patent Law Treaty in 2000Revival of substantive discussions (SPLT)

2002 Patent Law Treaty2002 Patent Law Treaty

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-single application for national

and international filings– safeguards against unintentional loss of rights– does not cover substantive patent law– a CP can be more liberal, except for filing date

2002 Patent Law Treaty2002 Patent Law Treaty

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

USPTO has circulated accession and implementation package to other agencies for clearance

Developments Outside SCPDevelopments Outside SCP

PCT Modifications – 30 months for Chapter II– PCT Revision Process

WIPO ‘Patent Agenda’WIPO management changes

Developments Outside SCPDevelopments Outside SCP

European Patent Convention Revision– Diplomatic Conference, Dec. 2000– ‘Second basket’

European Community Biotech DirectiveCommunity Patent – language issue

The Ultimate GoalThe Ultimate Goal

Mutual recognition of search and examination results among selected offices

Reduction of duplication of workReduction of costs?Increased uniformity of rights worldwideMore practical alternative to a “World

Patent”

SPLT: agreement in SPLT: agreement in principleprinciple

on a number of provisionson 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 SPLT: agreement in principleprinciple

on a number of provisionson a number of provisions

Deep harmonization???

SPLT

SPLT: agreement in SPLT: agreement in principleprinciple

on a number of provisionson a number of provisions 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 SPLT: agreement in principleprinciple

on a number of provisionson a number of provisions

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 issuesSPLT: 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 issuesSPLT: Some debated issues

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

Opposition of the USASPLT

SPLT: Some debated issuesSPLT: Some debated issues

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 issuesSPLT: Some debated issues

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 issuesSPLT: Some debated issues

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 issuesSPLT: Some debated issues

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 GroupSPLT: 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

PCT ReformPCT Reform

Done deal: 30 month time limit for Chapter 1– 11 reservations left

Future: Enhanced search report to be published with application

Automatic designation of all countries, but files not sent to designated office until requested

PLT-like forgiveness for missing time limits For more information, see

http://www.uspto.gov/web/patents/biochempharm/documents/pctreform.pps

Harmonization and the Harmonization and the USPTO Strategic PlanUSPTO Strategic Plan

To avoid “Patent Office Meltdown”– Long pendency– Poor quality (‘rationalized’ work = no work)

Work sharing – search, and examination?Deferred examinationPost-grant opposition, etc.

Is it time to think outside the Is it time to think outside the box?box?

Outside the 1836 boxAnd the 1991 boxMaybe all of the boxes …

Patent Cost IssuesPatent Cost Issues

The cost of a mid-size car?More for Less?Patent Office Meltdown?Languages, Languages, LanguagesCost of litigation – not addressed by

harmonization

Negotiation VenuesNegotiation Venues

GlobalInternational RegionalTrilateralBilateralUnilateral

Forward on All Fronts?Forward on All Fronts?

Thank you.