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Developments of Substantive Patent Law Harmonization. WIPO PATENT AGENDA. Initiative launched by Director General; approved by WIPO Assemblies in September 2001

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Developments of Substantive Patent Law Harmonization

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  • 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

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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

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  • 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

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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

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  • 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

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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

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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

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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

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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


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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)


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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


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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


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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


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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?


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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


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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


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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


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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


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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


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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


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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


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Thank youTomoko MiyamotoSenior Legal Officer, Patent Law SectionPatent Policy DepartmentWorld Intellectual Property Organization (WIPO)