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					Substantive Patent Law Harmonization:
         A 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)
              The Patent System Worldwide:
                   The 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
                Worldwide Demand for Patent Rights

                      1990 1991 1992 1993 1994 1995 1996 1997 1998 1999

                                         Total Demand   First Filings

Source: Trilateral Statistical Reports
              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%)                             1500
       – Republic of Korea (53.1%)                  1000                           2001
       – Mexico (50.7%)                                0
                                                           CN   IN   KR MX

• 5,378 international applications originated from developing countries
    – Republic of Korea (2,318), China (1,670), South Africa (418), India (316), Singapore
                        Why Harmonize?

1 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

2 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
                 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 (?)
        Substantive Patent Law Harmonization
• 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)
                 Some 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?
               Establishing a Road Map

• The limits of harmonization
   – confined to higher level law
   – tension with other areas of public policy and accommodating
   – the slowness of multilateral processes
   – limited impact on cost efficiencies

• Need for additional, complementary strategies
   – WIPO Patent Agenda
      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

• Managing the increasing number of tensions between
  intellectual property and other areas of public policy
   – health, biodiversity, standardization, “information is free”,
   – 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
                       URLs (general)
   (SPLT) (PCT) (WIPO Patent Agenda)