Developed Countries Speed Up Patent Harmonisation Outside WIPO 06/11/2006 by Tove Iren S. Gerhardsen for Intellectual Property Watch 2 Comments Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)By Tove Iren S. Gerhardsen With the United Nations negotiations on harmonising international patent law in deadlock, a group of developed countries has agreed on a basis for its internal discussion, according to a draft meeting report. The group’s plan involves three steps and represents a breakthrough 18 months after they began discussions, it said. The group is known as “Group B+,” referring to the developed country grouping at the World Intellectual Property Organization (WIPO) plus additional countries represented in the European Patent Office (EPO). Group B+ met in Geneva on 24 September, the day before the annual WIPO General Assembly, and is expected to meet again on 20-21 November in Tokyo. The group appears to be on a fast track to get agreement among its members, and some said it would seek to conclude negotiations at a final meeting in Washington next year. The WIPO General Assembly will meet again in September or October 2007 to consider the work plan for the Standing Committee on the Law of Patents (SCP), which is under a “moratorium” this year but is the locus at WIPO for harmonisation talks. In the September meeting, several countries pointed to the “entrenched positions” and disagreements on harmonisation long found within the group, but agreed to develop a text based on a compromise proposal, according to the draft meeting report obtained by Intellectual Property Watch. The compromise proposal was presented at the meeting by Denmark on behalf of a working group which created it, and is based on consultations conducted by Denmark over the summer, the report states. The United Kingdom also has played a central role, the report said. The proposal was prepared by the Japanese, as the B+ secretariat this year, and the obtained version carries a 31 October 2006 date. The United Kingdom is now transforming the proposal into “treaty-type language” during the first half of November, which will be presented to the Tokyo meeting. [Editor’s Note: the draft treaty text is available in the IPW story on 7 November 2006] The group has previously met in Munich and Tokyo, the draft report states. Group members agreed to proceed with a three-step approach. The first part of the plan was to agree to the compromise package at the 24 September meeting as a “good set of guiding principles upon which our further work could be based,” the Japanese said in the meeting, according to the report. This was done, although several members, including Australia, Canada, the EPO, European Union, Japan, Switzerland and the United States, said they would have areas where they could not agree and would negotiate later. The second step is “to discuss and agree on the items for decision” at the Tokyo meeting. The third step is “to decide on these remaining items at a later Group B+ meeting, possible in Washington next year,” the Danish chair of the working group said, according to the report. The group appears to have a heightened sense of determination to reach agreement among themselves. “The time is now,” the Danish chair said. “We have a chance to write the history.” Reservations to Be Negotiated But in terms of technical discussions, it is not clear what exactly the Group B+ countries agreed to agree on later, but reading from countries’ reservations, differences still remain. Some questioned whether the timeline would be too optimistic, while others pointed out that the harmonisation debate at WIPO has been going on for more than 20 years, the report said. Group B countries in WIPO have in recent years put forward a proposal for a “reduced package,” to base the harmonisation on four key issues: prior art (public disclosures of the invention before patent filing); novelty (new characteristics which are not prior art); inventive step or non-obviousness (goes beyond what is obvious to a skilled person in the field); and grace period. But developing countries have said they could not agree unless the negotiation also included some other areas of concern to them. At the meeting, Finland said on behalf of the European Union: “We think that the compromise package presents a basic platform to take the negotiations to the next level as regards adoption of the first-to-file principle, elimination of the Hilmer doctrine and the grace period.” “First-to-file” grants a patent to the first party to file for the patent as opposed to the “first-to-invent” approach primarily used in the United States. “Grace period” is the period before filing during which the inventor may publish his or her invention, and “prior art” indicates material that was publicly available before the “relevant date” of a patent or application. A patent must be novel and involve an inventive step (and in the United States be “non-obvious”) when compared to the prior art. The “Hilmer doctrine” separates “the date that an application obtains priority from the date that the patent granted on the application obtains prior art effect for applications filed outside the United States,” according to a legal source. Finland said the compromise “forms an acceptable basis for further negotiations also as regards rules on treatment of conflicting Patent Cooperation Treaty applications, abstracts and whole content, experimental use, secret prior commercial use, and methodology for assessing inventive step.” But it added that it was still concerned about provisions on “secret prior art and anti-self-collision,” which it did not further explain. According to the report, Australia mentioned concern about the harmonising of “prior use of rights.” Canada said it has some difficulty with some unspecified provisions “which don’t exactly line up with our current laws or current practices.” The United States said the proposal is “not consistent” with previously expressed US positions and it continued to have “a lot of concerns.” It specified the adoption of a first-to-file system, but signalled that the compromise process could move ahead without agreement on that issue. “That [adopting first-to-file] is something we are really trying to work for, but we do think that we are in a position in this group to try to come to a package that will be acceptable and workable for our members, both politically, but also to create a system of best practices that we can adopt in the international patent system,” the US representative said. Back to WIPO? Although Group B+ is carrying out the harmonisation talks separately from the overall WIPO efforts, there is a general understanding that its efforts should be brought back into WIPO later, the draft said. Japan was the most direct in this sense. “I hope an agreement we are striving to achieve this time of course would be a WIPO-wide agreement,” it said. “However, at least we really have to make some step forward towards the establishment of the treaty within our group, in the developed nations group.” Japan also highlighted the threat to WIPO of failing to make progress on these issues. “I think the WIPO is even more seriously ill than the WTO,” Japan said, referring to the stalled negotiations at the neighbouring World Trade Organization. “It has been paralysed for more than the last 20 years. The people are questioning the raison d’être of the WIPO.” Japan said that after patent harmonisation, patent quality and enforcement should be the focus, the report stated. Later in the meeting, during a discussion of WIPO governance, Japan said that it “would be essential to change the mindset of the director general as well as the staff of WIPO’s bureaus,” the report said. Switzerland and the European Union said they believed the aim should be to bring the discussion back into WIPO. “[W]e have to bring back in WIPO the results of the work of the Group B+ and not just negotiate something among us, forgetting WIPO,” a Swiss delegate said, as reported. Keep SCP Alive But No More Forums for Rants At the WIPO General Assembly it was decided to put the WIPO patent harmonisation debate, as discussed in the Standing Committee on the Law of Patents (SCP), on hold in 2007 (IPW, WIPO, 4 October 2006). This reflects the 24 September discussions in the B+ Group, according to the report, although some countries proposed a three-day meeting on a technical issue in 2007, related to the harmonisation, in order to keep the topic on the table, the report said. But many countries questioned the idea of having a meeting just for the sake of having a meeting, which most likely would end without result, the report said. What countries such as the United States did not want was another meeting which would end up like the open forum on the draft Substantive Patent Law Treaty (further harmonising national laws) held in the March 2006 (IPW, WIPO, 8 March 2006), which was “more harmful than helpful,” it said in the meeting. “It was a forum where there was just a lot of negative rhetoric,” the United States said, according to the report. Australia also said that it had heard the forum has been “a sort of one-sided political rant on sort of matters to do vaguely with patents,” the report said. Instead, on the proposal of the United States, it was suggested to build on a lecture series WIPO has held, the report said. The UK chair clarified, “We can keep the SCP in the headline by simply using the lecture programme with the SCP flag on it.” Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related "Developed Countries Speed Up Patent Harmonisation Outside WIPO" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.