WIPO’s Gurry Details Efforts On International Patent Needs

By Liza Porteus for Intellectual Property Watch
NEW YORK – A supplementary international patent search will be introduced and likely approved during the World Intellectual Property Organization (WIPO) General Assembly meeting later this month, WIPO Deputy Director Francis Gurry told Intellectual Property Watch on Tuesday.

Gurry also raised an idea discussed this week between the European Patent Office, Japan Patent Office and US Patent and Trademark Office (USPTO) that he described as a proposal to “look at using, to a greater extent, the international search report in the national phase.”

Not only is the demand for patents increasing, but so is the number of countries sending in applications. From 1995 to 2005, for example, China’s resident patent applications increased 834 percent, while Korea’s grew by 100 percent. The size of office in terms of applications received is now: Japan, United States, China, South Korea and Europe.

Under the WIPO Patent Cooperation Treaty (PCT), the usual procedure includes an international search report prepared by an international search authority. But with increasing diversity in the origin of patent applications comes a bit of a language problem during searches, according to Gurry.

“What we are witnessing is in fact a 500-year shift,” Gurry said during a luncheon address to hundreds of Intellectual Property Owners Association members and their guests at the Waldorf Astoria in New York City on Monday. “For the last 500 years, most of the world’s technology has been produced in European languages, now we’re seeing roughly a quarter of it being produced in Japanese, Chinese and Korean.”

Gurry later told Intellectual Property Watch that, “because of the increasing linguistic diversity, it is increasingly difficult for a single office to cover all languages,” adding, “This supplemental international search would enable an applicant to request, in addition to the principal search, a supplementary search from another international authority.”

But under the supplemental search, an initial search by the USPTO, for example, could be supplemented by a search by the Chinese patent office.

“You’re supposed to do that anyway but practically speaking, if you’re an American or a German, how do you search Chinese? It would enable a search to be done in other languages,” Gurry said.

He said he sees no major stumbling block to the proposal being approved later this month. If approved, it would go into effect on 1 January 2009. “I think it should be OK but I can’t say it’s done,” he said.

SHARE Proposal Discussed

Gurry also told Intellectual Property Watch of a proposal being discussed by developed countries this week called SHARE, which stands for Strategic Handling of Applications for Rapid Examination. It is intended to give greater credit or weight to international search reports conducted to alleviate some of the workload of national patent offices.

Currently, after an international search report is prepared, the application proceeds to the national phase, where each PCT member state considers whether to grant the patent. Each state has the option to do its own new search, or use the international one. The proposal would “try to give more credit to the international search,” he said.

According to the USPTO – which notes that about 47 percent of its “utility, plant, reissue” applications are filed by residents of foreign countries – patent applications filed in the office of first filing (OFF) in one country first will not be looked at by another country until search and examination results are available from the OFF.

“There is an incentive there already in that they don’t need to do the work again,” Gurry said. But “nobody’s going to accept it just as it is – they will do top up searches…. The objective is to investigate how they can take the international search into account to a greater extent.” The proposal will be studied and will not be made formal for “some time,” he said.

Proposals for Patent Management

During his Monday address, Gurry said these are just some proposals being considered to keep up with the demand for new patents and to streamline the process by which they are approved or denied. Other ideas include outsourcing and patent law harmonisation.

But “none, I think it’s fair to say, has yet provided the golden solution to the problem of patent management,” Gurry said. But with individuals producing over one million new inventions each year that require patents, “there is no inactivity in trying to address this problem.”

Gurry said some patent backlog problems faced by several countries are because of overwhelming demand, but others more because of a lack of infrastructure to deal with the requests. The problem affects 10 to 20 offices around the world, and the only effective way to deal with it is through international cooperation like those measures outlined in the PCT, he said.

One idea to consider is a single international procedure from time of filing up to, but not including, granting or refusal of a patent, Gurry said.

With the technological advances made in the past 10 to 15 years, networking can provide a good working solution, he said. That would include a single international search for prior art conducted by several patent officers after a patent application was filed. An applicant would have the ability to designate an authority in each of several language zones for the search.

“I think it would have the advantage of actually practically achieving harmonisation,” Gurry said.

On other topics, Gurry said current challenges to IP are technology, economics and ethics. For example, he said, a recent Organization for Economic Cooperation and Development study said the economic impact of piracy of physical goods was $200 billion in 2005, “a sum which is more than the individual GDPs of some 150 countries around the world.”

WIPO to Address Internal Problems “Soon”

Gurry also addressed several organisational challenges WIPO is facing. Saying he hopes many “transient” problems will be fixed “soon,” there are other institutional challenges that are more long-term in nature.

“WIPO, I think, is a unique organisation in that it has two very distinct and different roles,” he said. Those roles are: as a service provider to an international economy, given that 92 percent of its revenue is generated from fees and services rendered, including its arbitration centre, which has handled over 11,000 domain name disputes; and as a classical intergovernmental organisation involved in treaty-making and with development assistance.

“The time has come for an explicit recognition for both of those roles and that different demands are placed on the organisation for each of those roles,” Gurry said.

Enterprises are interested in global markets, he said, and “it is appropriate that we address the developmental concerns of developing countries and their IP infrastructure.” But WIPO cannot do the latter without funding and a fee base, Gurry said. “They are mutually compatible roles of the organisation.”

Liza Porteus may be reached at info@ip-watch.ch.