OECD Considers Entering Into Patent Harmonisation Debate

MADRID – At a recent conference here on patents and research it was suggested that the Organisation for Economic Co-operation and Development (OECD) would be a good forum in which to discuss certain aspects of the patent harmonisation process that so far has taken place at the World Intellectual Property Organization (WIPO).

The 18-19 May OECD conference focused on research use of patented inventions, but during one session the debate was “sidetracked” to focus on harmonisation, and a number of the participants seemed to be open to the idea of moving portions of the harmonisation debate from WIPO to the OECD.

Alain Gallochat of the French Ministry of Research said, “more or less, the SPLT [Substantive Patent Law Treaty] is dead,” referring to the WIPO treaty proposal that has been the focus of the debate over a possible harmonisation of worldwide patent laws.

The SPLT has been discussed in the WIPO Standing Committee on the Law of Patents (SCP), but after the talks stalled at a 10-12 April informal session, this year’s SCP was cancelled and the issue was referred back to the WIPO General Assembly, which meets in September (IPW, WIPO, 12 April 2006).

The SPLT debate has recently centred around a “reduced package,” covering only a few core harmonisation issues such as recognising the first to file for a patent, which is the system used in Europe, versus first-to-invent, which is used in the United States. Another issue being addressed is grace period, which is used in Europe and elsewhere. Grace period refers to the period before filing during which the inventor may publish his or her invention (IPW, WIPO, 8 March 2006).

The United States, Europe and Japan have been working among themselves and at WIPO to harmonise their patent laws. The issue of grace period has been one of the sticking points of the harmonisation debate – especially between the US and the EU, which in general agree on the need for harmonisation – and it is this issue that some OECD meeting participants suggested should now be debated in the OECD instead.

The debate on harmonisation at the OECD meeting started when one participant wanted to know what had happened to the reduced package.

Gallochat said it had been a mistake by Europe to link the issue of first-to-file or to first-to-invent to grace period in the harmonisation debate. He said the OECD might be a good place to discuss the issue of grace period.

A WIPO representative said that one of the reasons that the developing countries could not accept the reduced package in the negotiations was that the issues were not priorities for them. At WIPO, key developing countries have sought to broaden the discussion to include other issues.

Joseph Straus, director of the German Max Planck Institute for Intellectual Property, Competition and Tax Law, said that in terms of grace period, “the European Union should not hide behind Latin America” or issues such as biodiversity, which these countries favour.

He said that this was a debate between the European Union and the United States, as Latin America had a system of using grace period. Straus also entertained the idea of the OECD being a good forum for discussing the grace period differences.

Straus also compared the US and European patent systems in general and said there is a “considerable difference” in the law. He said that in Europe a “considerable number” of patents are withdrawn within one year after a research report has been submitted, while in the United States as many as 98 percent of applications lead to a patent, Straus said.

John Raubitschek, patent counsel at US Commerce Department Office of the Chief Counsel for Technology, said that, “in the US we all support harmonisation but the question is what” harmonisation. Raubitschek said that many of the lawyers in the United States support the first-to-file system that is being used in Europe.

Pessimism About WIPO Debate

Gallochat said the March WIPO open forum on the SPLT, in which all sides presented their arguments, had left him quite optimistic about the debate. But at the April informal session, the “situation changed,” he said. Gallochat said now he is “pessimistic” about the harmonisation issue having been referred to the General Assembly, as this was what happened last year.

In the debate, there had been “the US against the rest of the world” as well as a division along North and South lines as the developing countries refused to accept the reduced package, he said. The South had tried to include issues that are not part of the SPLT such as protection of biodiversity and anti-competitive measures, he said.

The issue of grace period was also mentioned in a presentations made by José Luis de Miguel, director of Technology Transfer Office at the Spanish National Research Council (CSIC). He said he favours the use of grace periods as this system is better adapted to publishing research, which diminishes excessive fragmentation in patented knowledge.

These suggestions as well as others regarding research exemptions may provide input into an OECD project that may result in guidelines for the member states, the OECD said. The project is to be completed by the end of 2006 (IPW, Patent Policy, 19 May 2006).

The theme of the OECD conference was patents and research exemptions and whether patents hinder certain research. In Europe, for example, it is possible to carry out research on patented material if the aim is to “understand and improve the invention,” said John Barton of Stanford Law School. Research exemptions are not legal in countries such as the United States, according to experts.

The conference was organised by the OECD and the CSIC, with the support of the European Patent Office.

US Visits OECD to Push for WTO Progress

OECD appears to be a useful forum for seeking to move debates stuck in other fora. Deputy US Trade Representatives Susan Schwab and Peter Allgeier were scheduled to visit the OECD in Paris on 23-24 May to attempt to “advance ongoing World Trade Organization negotiations,” the US trade office said.