Developed Countries Keep Patent Harmonisation Issue Alive

By Tove Iren S. Gerhardsen
At a Tokyo meeting last week of the developed countries of the World Intellectual Property Organization (WIPO), the issue of patent harmonisation was kept alive though no specific decisions were reached, a source said.

Kenichiro Natsume of the Japanese mission told Intellectual Property Watch that the group, referred to as B+, had not agreed on anything “as a whole.” Rather, a “nothing-is-agreed-until-everything-is-agreed” approach was taken, he said. It was unclear at press time in which specific areas discussion was most focused.

The group will continue to discuss patent harmonisation at the next meeting, scheduled for May or June in Washington, DC, he said. That will be at the commissioner level, meaning that heads of patent offices would meet.

Natsume said the 20-21 November working group meeting in Tokyo was at the director level. A representative from WIPO, which has observer status, also attended.

Group B+ has discussed the issue of patent harmonisation among themselves after the issue got stuck at WIPO. At a September meeting in Geneva, the group agreed to a text on harmonisation developed by a working group (IPW, WIPO, 7 November 2006).

In the meantime, this text has been turned into treaty language, which was discussed in detail at the Tokyo meeting, Natsume said. The draft treaty shows a focus on the issues of prior art, first-to-file, novelty, and grace period.

Grace period is the period before filing during which the inventor may publish his or her invention; prior art indicates material that was publicly available before the “relevant date” of a patent or application; novelty (inventive step/non-obviousness) refers to the fact that a patent must be novel and involve an inventive step (and in the United States be “non-obvious”) when compared to the prior art; and first-to-file (dealt with under “right to a patent for a claimed invention”) refers to the European system opposed to that used in the United States, where the first to invent has the right to a patent.

Other issues that are expected to be contentious are “prior use of rights” and the elimination of the “Hilmer doctrine,” according to minutes from a September meeting of the group (IPW, WIPO, 6 June 2006).

Natsume said the intent is that the B+ members would agree among themselves and then later bring the issue back into WIPO and “expand” the harmonisation to other countries. Another official said the “discussions aim at facilitating further progress in WIPO.” And another official from one of the B+ countries said, “It is our hope that we with this little initiative can move the WIPO process further.”

Japan currently holds the secretariat of the Group B+ but its mandate will expire at the end of 2006. In January 2007, the United States will take over, followed by the European Patent Office in 2008, Natsume said.

Separate trilaterals meeting

Separately, prior to the meeting of the working group, the “trilaterals,” referring to the United States, Europe and Japan, held its 24th Annual Trilateral Conference, also in Tokyo. WIPO has observer status here as well.

The trilaterals met from 13-17 November, according to the meeting document.

The meeting addressed a series of technical issues aimed at smoothing patent offices’ procedural differences and increasing sharing of their systems. For instance, the trilaterals “recognised the usefulness of harmonising classification by introducing the trilateral harmonised scheme … so that users could access all documents worldwide using one search key.”

As for the harmonisation of classifications, “the trilateral offices decided that acceleration of classification harmonisation is needed and instructed the working group to act accordingly.”

The meeting also discussed enhanced work sharing, re-use of work results, trilateral patent examiner exchange and a possible common search platform for biotechnology in the future. They also agreed to exchange information in the area of nanotechnology.

On the WIPO digital libraries concept, the group “agreed on a common approach. A detailed proposal will be worked out for the February meeting of the WIPO working group,” the meeting report said.

The paprticipants at the meeting, according to Japan, were: Australia, Austria, Belgium, Canada, Denmark, European Commission, European Patent Office, Finland, France, Germany, Hungary, Ireland, Italy, Japan, Korea, Latvia, Lithuania, New Zealand, Norway, Poland, Romania, Singapore, Slovenia, Sweden, Switzerland, Spain, United Kingdom, United States and WIPO. Korea and Singapore participated for the first time, the source said.

Separately, WIPO will hold a colloquium on “standards and patents” on 29 November, which is the second meeting in a colloquium series taking place between October 2006 and September 2007, WIPO said. The meeting is available to the general public, and the program is may be viewed here.

Tove Gerhardsen may be reached at tgerhardsen@ip-watch.ch.