Albert Tramposch albertt@burnsdoane Counsel, Burns Doane Swecker & Mathis LLP Alexandria, VA

1. EU Community Patent, Substantive Patent Harmonization and PCT RevisionD.C. Patent Lawyers Club March 10, 2002

2. Albert Tramposch albertt@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)

3. International Computer 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!

4. At the conclusion of this program, please deposit your illegal Japanese laptop computers in the box by the door.

5. International Patent 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!

6. Free Trade in IP Goods & Services? • Uniformity of regulation - Harmonization • Economies of scale - mutual recognition • Non-discrimination - same rights no matter where obtained

7. 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?

8. A Question of National Sovereignty? Internationalization of IP Law 1880’s - Paris and Berne Conventions Globalization of IP Law 1990’s – WTO and TRIPS Agreements

9. A Patent Diversion:The New EU Community Patent

10. 2490th Council Meeting Minutes • 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

11. Courts • 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

12. Languages • 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 ??

13. Cost of the Community Patent • About €25,000 ($27,000) for up to 25 states • About half the cost through the EPO in 8 states

14. Other 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

15. International Patent Harmonization • Began in 1984 (grace period discussions) • Committees of Experts • Failed Diplomatic Conference in 1991 • U.S. withdrawal from discussions • Procedural Harmonization: • Committees of Experts and “SCP” • Patent Law Treaty in 2000 • Revival of substantive discussions (SPLT)

16. 2002 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

17. 2002 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

18. Developments Outside SCP • PCT Modifications • 30 months for Chapter II • PCT Revision Process • WIPO ‘Patent Agenda’ • WIPO management changes

19. Developments Outside SCP • European Patent Convention Revision • Diplomatic Conference, Dec. 2000 • ‘Second basket’ • European Community Biotech Directive • Community Patent – language issue

20. The Ultimate Goal • Mutual recognition of search and examination results among selected offices • Reduction of duplication of work • Reduction of costs? • Increased uniformity of rights worldwide • More practical alternative to a “World Patent”

21. 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

22. SPLT: agreement in principleon a number of provisions • Deep harmonization??? SPLT

23. SPLT: agreement in principleon 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

24. SPLT: agreement in principleon 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

25. 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

26. SPLT: 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 USA SPLT

27. SPLT: 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

28. SPLT: 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

29. SPLT: 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

30. SPLT: 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

31. 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

32. PCT 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

33. Harmonization and the USPTO Strategic Plan • To avoid “Patent Office Meltdown” • Long pendency • Poor quality (‘rationalized’ work = no work) • Work sharing – search, and examination? • Deferred examination • Post-grant opposition, etc.

34. Is it time to think outside the box? • Outside the 1836 box • And the 1991 box • Maybe all of the boxes …

35. Patent Cost Issues • The cost of a mid-size car? • More for Less? • Patent Office Meltdown? • Languages, Languages, Languages • Cost of litigation – not addressed by harmonization

36. Negotiation Venues • Global • International • Regional • Trilateral • Bilateral • Unilateral

37. Forward on All Fronts?

38. Thank you.