The intellectual property system seems to be tight at the seams with a global overload of work for national IP offices and a backlog in patent requests. Further international cooperation and some adjustments are necessary to keep an efficient high quality IP system, according to speakers at a private-sector meeting in Geneva on 14-15 January.

The Association Romande de Propriété Intellectuelle (AROPI), a group of Swiss French-speaking IP lawyers and experts, organised its first international meeting in the premises of the World Intellectual Property Organization (WIPO). The meeting called Aropiade 2010 in a loose reference to the ancient Greek games, was meant to provide an open gathering of the intellectual property community to discuss the prospects for the IP system but also to examine more practical aspects of IP practice, such as recent and upcoming modifications in the Patent Cooperation Treaty (PCT), managed by WIPO.

The transition towards a knowledge economy with a greater value of intangible assets is a particular challenge, said Francis Gurry, director general of WIPO. The increasing number of patent requests also represents a source of difficulty for the system.

The migration of content to the internet has brought changes and the classical model of copyright is not working, said Gurry. There is a tendency to try and suppress illegal downloading, such as the recent French legislation, and initiatives in the United Kingdom and Spain. But in order to help the general public understand the real issue, it might be interesting to reformulate the description of what is at stake, he said. The issue is the financing of culture in the 21st century, Gurry said, and “putting teenagers behind bars” does not seem a tactic that is likely to win over the general public, he said.

A lot of changes are occurring in the IP field, and those changes are taking place in an instable political framework, Gurry said. The global wealth inequality brings instability to IP as technology is a focal point for the differences between countries.

This instability carries risks for IP, he said, in particular a political paralysis, which is not only true for WIPO. That could leave a vacuum that could be filled by the private sector. IP policies will be more and more market- and technology-driven, according to Gurry. Google Books is a good example of this. Public goods will be managed by private interests, he said.

WIPO is trying to find a way to separate what is necessary for a functional normalisation from harmonisation that touches the national political sphere. Gurry gave the example of cell phones and the different zones where users would like to use their phone. In order to achieve that, he said, international agreements are necessary.

For Roland Grossenbacher, director of the Swiss Federal Institute of Intellectual Property, one of the main issues is the work overload in patent offices around the world. This overload jeopardises the whole patent system, he said. This challenge could be addressed with a new dimension of international cooperation, he added.

Part of the problem lies in the fact that requests are more numerous but also more complex, Grossenbacher said. The specialisation of patent examiners is reaching its limits faced with the multidisciplinary natures of requests and the demand for higher quality in the patent examination process.

The global backlog in the main global patent offices will continue to grow if global collaboration is not improved, he predicted.

One of the main consequences of the backlog is that it puts patent applicants at a disadvantage vis à vis their competitors. Other innovators might catch up with the requested patented invention before the patent is granted, he said.

Grossenbacher described two measures to help the problem. A “classical” measure would be to hire more examiners, but he said young scientists should put their talent towards innovation and not become patent examiners. Also, the multiplication of “hyper-specialised patent examiners” would be hard for patent offices to manage, he said.

A second, bolder measure, according to Grossenbacher, would be a global patent. But at this stage when there is no sign of a European Community patent, it seems utopian, he said, although the PCT has the potential to grow in that direction.

Another idea would be mutual recognition between patent offices, but this is dangerous if prior conditions are not met. For the moment, that would probably reduce patent quality, he said.

Alternative solutions have been developed like sharing work among offices, but this can be very controversial, he said. An example of worksharing is the Patent Prosecution Highway, a pilot programme which involves close cooperation between some IP offices, such as the Canadian Intellectual Property Office, the United States Patent and Trademark Office, and the Japan Patent Office. It is meant to accelerate the examination of patents in collaborating national offices.

There is also the idea of asking wider participation of other actors, such as requesting the applicant to give thorough information on the state of the technology, or third parties to present possible anteriority, prior use.

PCT Takes a Digital Step

The PCT, which allows patent applicants to file international patent applications will see several changes in 2010, said Christine Bonvallet, lawyer for the PCT Legal Division at WIPO. From 1 January, in the request form, applicants will be able to ask the receiving office or to the WIPO International Bureau to prepare and transmit or to obtain, respectively, a certified copy of the previous application(s) from a digital library.

As of 1 July, some modalities concerning the supplementary international searches will enter into force, in particular regarding the scope and some limitations under specific circumstances as a result of further modifications of Rule 45bis.5(g) and (h) and 45bis.9(c), said Bonvallet.

As of 18 January, applicants are able to download documents electronically to the PatentScope gateway, said Ann Bardini, head of the WIPO PCT Functional Support Section in the PCT Operations Division. PatentScope is a WIPO-managed patent search database.

All documents should be transmitted in PDF format, said Bardini. This procedure is expected to be cost-saving, more efficient, and shorten response time since WIPO will be saved the document digitalisation process.

Several types of documents will be accepted electronically, such as modifications, supplementary searches, withdrawing requests, unofficial comments by applicants on the written International Searching Authority’s opinion. However, it will not be possible to send initial requests, said Bardini.

Thu-Lang Tran Wasescha of the World Trade Organization IP Division also spoke at the event.