Developments of Substantive Patent Law Harmonization by pr3GG4


									          Developments of
Substantive Patent Law Harmonization

• 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

                                 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

                               WIPO Patent Agenda

• 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
• Discussion paper to be prepared by WIPO for
  consideration by WIPO Assemblies in September
   – general policy issues
   – functional and operational issues
   – user issues
   – possible options for the future
                               WIPO Patent Agenda
                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
• Proposed 2nd stage – work yet to commence:
   – comprehensive overhaul of the entire PCT system
           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

                                                PCT reform
        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
          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
       Substantive harmonization
• 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 principle
       on 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 principle
    on 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 principle
    on a number of provisions (ctd)

• Sufficiency of disclosure
   – discussion on “undue experimentation”
   – deposit of biological material
• Claims
   – “support” versus “written description”
• Definition of novelty
• Definition of inventive step/non-obviousness

       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
• 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: 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
• Some discussion on file wrapper estoppel

   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
• Not a “make or break” issue

   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: Some debated issues (ctd)

Additional requirements relating to description

• “technical”
• citation of prior art (“mandatory” versus
• presentation of invention as a solution to a
• “best mode” requirement

          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

         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
               Thank you

               Tomoko Miyamoto
  Senior Legal Officer, Patent Law Section
           Patent Policy Department
World Intellectual Property Organization (WIPO)

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