Developments of Substantive Patent Law Harmonization

1. Developments of Substantive Patent Law Harmonization

2. 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

3. 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

4. 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

5. 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 WIPO Patent Agenda

6. 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

7. 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

8. 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 PCT reform

9. 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

10. 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 PLT

11. 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

12. 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

13. 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

14. 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

15. 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

16. 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

17. 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

18. 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

19. 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

20. 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

21. 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

22. 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

23. Thank youTomoko MiyamotoSenior Legal Officer, Patent Law SectionPatent Policy DepartmentWorld Intellectual Property Organization (WIPO)tomoko.miyamoto@wipo.int