Substantive Patent Law Harmonization: A View from WIPO

1
Substantive Patent Law HarmonizationA View from
WIPO

• Securing IP Rights Abroad
• American Bar Association (ABA)
• Section of Intellectual Property Law
• April 12, 2002
• Washington DC
• Francis Gurry
• Assistant Director General
• World Intellectual Property Organization (WIPO)

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The Patent System WorldwideThe Current Context

• Rapidly increasing demand for patent rights
  worldwide
• the globalization of IP rights
• Stress in the system
• pendency periods
• Diversity of needs
• the dominance of the trilateral regions
• the emergence of growth in certain developing
  countries
• the place of small offices

3
Worldwide Demand for Patent Rights
Source Trilateral Statistical Reports
4
PCT Filings from Developing Countries

• 70.6 increase over 2000 in number of PCT
  applications filed in developing
  countries
• Particularly high increase in
• China (188.4)
• India (102.6)
• Republic of Korea (53.1)
• Mexico (50.7)
• 5,378 international applications originated from
  developing countries
• Republic of Korea (2,318), China (1,670), South
  Africa (418), India (316), Singapore (271)

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Why Harmonize?

• Approximating legal to economic conditions
• Can patent policy be realized in globalizing
  markets when it operate divergently in different
  territories?
• business method patents
• The mobility of knowledge as a factor of
  production
• the law of the export market rules
• Making choice of law less important
• Creating the Conditions for the Economically
  Rational Use of Resources
• The perspective of national IP Offices
• duplication of work
• The perspective of the user
• cost of obtaining and maintaining protection

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Patent Law Harmonization

• Negotiations 1985 to 1991
• 1991 Diplomatic Conference failed to conclude a
  treaty
• Patent Law Treaty (PLT) 2000
• formal and procedural matters
• entry into force accession or ratification by 10
  States (1 so far)
• Draft Substantive Patent Law Treaty (SPLT) now
  being discussed by Standing Committee on Patents
  (SCP)
• 2 SCP meetings in 2001 2 in 2002
• Diplomatic Conference in 2004 (?)

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Substantive Patent Law 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
• includes disclosures on the Internet
• Other issues on the table
• first-to-file, early publication, post-grant
  opposition
• Interface between PCT and PLT
• Provisions at three levels treaty, regulations,
  practice guidelines (harmonizing Office practices)

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SPLTSome controversial issues

• Patentable subject matter and technical character
  (USA wants a broad approach)
• Inclusion of industrial applicability/utility
• Support requirement (Europe) -v- written
  description requirement (USA)
• Grace period
• Grounds for refusal/invalidation of an
  application
• unlawfully acquired genetic resources as a ground?

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Establishing a Road Map

• The limits of harmonization
• confined to higher level law
• tension with other areas of public policy and
  accommodating development
• the slowness of multilateral processes
• limited impact on cost efficiencies
• Need for additional, complementary strategies
• WIPO Patent Agenda

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Possible Elements of Additional Strategies

• Development of PCT
• PCT Reform
• Harmonization of practices
• experiments in mutual exploitation of work
  product
• use of PCT as a vehicle
• Encouragement of regional systems
• intermediate solution
• Thinking the long-term need for, and architecture
  of, a global title

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Obstacles

• Managing the increasing number of tensions
  between intellectual property and other areas of
  public policy
• health, biodiversity, standardization,
  information is free, development
• are uniform law and practice possible?
• Managing the tensions of re-structuring in
  administrations and professions
• the changing role of the national office
• fear on the part of intellectual property
  professionals

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URLs

• http//www.wipo.int (general)
• http//www.wipo.int/eng/document/scp_ce/index_6.ht
  m
• (SPLT)
• http//www.wipo.int/pct/en/index.html (PCT)
• http//patentagenda.wipo.int (WIPO Patent Agenda)