Developed Countries Close Some Gaps Between Patent Systems

By Liza Porteus Viana for Intellectual Property Watch
WASHINGTON, DC – The patent offices of the United States, Europe and Japan have agreed to coordinate work-sharing, improve the quality of patent applications and work on other ways to standardise procedures aimed at reducing the offices’ workloads.

The memorandum of understanding was announced on Friday at the culmination of the 25th annual meeting of the three offices, known as the trilaterals, last week in Washington, DC. The offices vowed to also coordinate electronic business developments, harmonise search strategies, tools and procedures, and promote dissemination of patent information.

“Our offices intend to strengthen cooperative efforts in ways that promote innovation and focus on 21st-century realities by reducing redundancies, streamlining processes, and encouraging quality applications,” said John Dudas, director of the US Patent and Trademark Office (USPTO).

“Really, I think we achieved what we wanted to achieve,” in the meetings, Dudas told Intellectual Property Watch. “The key for us is to continue to deepen the cooperation. The key is for us is to continue to set goals and meet and surpass them.”

But on the key issues of harmonising their patent systems, there appeared to be little to report. Ruud Peters, CEO of Koninklijke Philips Electronic, was pessimistic on increased patent harmonisation – a goal many in industry want because it will cut down how many applications they have to submit, and, hopefully, how much time passes before they receive word on whether their innovation received approval. “There we have reached a real impasse and I’m quite realistic, I don’t think we’ll reach one very soon,” Peters said.

Japan Patent Office Commissioner Masahiro Koezuka said that harmonisation issues such as recognising the first inventor to file and grace periods are major issues to be overcome and are being dealt with in Group B+ meetings, which involves the Group B developed countries under World Intellectual Property Organization (WIPO) plus some EPO members who are not in the WIPO group. Dudas also mentioned that Group B+ is dealing with these issues, saying there have been successes but other sticking points like grace period.

Koezuka called for industry to help achieve a breakthrough. “I believe it is important this movement be moved forward not only by the government but industry should also be deeply involved,” he said.

Alison Brimelow, president of the EPO, agreed that cooperation between the trilaterals can be reinforced through better harmonisation. She continuously stressed the need for increased cooperation between the trilaterals on a number of issues.

Peters noted that the WIPO Patent Cooperation Treaty (PCT) already harmonises patents and some formalities associated with the process. If everyone complied with the PCT, he said, additional local rules should not be needed.

Brimelow agreed, saying the trilaterals need to build on the PCT. “I thought that the patent system was about not reinventing the wheel,” she said. “We have the PCT, can we please try to not work around the bits we find uncomfortable?”

Workloads Rising

Mounting workloads are a “major threat,” she said, and noted the rapid rise in patenting in “big and powerful” players such as China and South Korea. With that comes a proliferation of additional languages to sort through.

Brimelow said she hoped the London Agreement, expected to come into force in 2008, would alleviate some of the language issues. The agreement was reached in October 2000 with the aim of creating an affordable post-grant translation regime for European patents. In January, she said, 23 languages will be relevant in the European Patent system. All that is left is for new French President Nicolas Sarkozy to sign it, she said.

“By golly, it has been a struggle and we know very clearly in Europe, language is a culture issue and we don’t like letting go of our cultural history,” Brimelow said.

The Indian Patent Office, Brazilian Patent Office, and the Korean and Chinese patent offices are also joining discussions on work-sharing. “This is a club that probably needs to grow,” Brimelow said. “We need to improve how we cooperate to tackle the problems.”

Both government and industry officials agreed that patent hopefuls can do more to improve the quality in their applications to speed up the process. “The days when auntie cleaned up are gone,” Brimelow said, adding that the trilaterals need to agree on what constitutes a good application. “Clearly, nodding through rubbish is not what we’re about.”

Dudas told Intellectual Property Watch that in the past few years, the USPTO has seen a higher error rate in the patent process correspond with a higher number of claims being submitted. “We need to have good quality as it comes in the door,” he said.

In an effort to improve quality, the trilateral offices also agreed to utilise technology-focused cooperation in examination, which will include: collaboration among examiners; development of comparative studies; development of search guidelines; exploration of use of common search tools to facilitate common search techniques and resources; and continual collaboration after the development of products.

Industry View

Also during last week’s conference, industry representatives supported the offices’ efforts to reduce backlogs and push patent applications through the approval process faster, before the technologies they’re trying to patent are outdated.

“To support our businesses, we need to have these patents quickly” and they must be of good quality, Peters of Philips said during Thursday’s public users conference. “We want to know when we can sell innovations.”

Brad Smith, senior vice president and general counsel at Microsoft, noted that in the past 25 years, global trade has grown five-fold, and global patent applicants have grown by 78 percent.

“You don’t need a crystal ball of any great magnitude to predict in the decade ahead, we will see double-digit resident patent application growth,” particularly in India, China, and probably a dozen or more other countries, Smith said, adding that the Internet has compounded the speed of globalisation.

Speed is of the essence, particularly for the high-tech and health-care communities, industry officials said. Information technology spending, for example, will reach $1.2 trillion worldwide this year and will grow 6 percent each year for the next few years, said Robert Holleyman, president of the US-based Business Software Alliance.

“We know we must have a robust and balanced system that promotes innovation,” Holleyman said “Patents are a tool of the global economy.”

Not only is the demand for patents increasing, but so is the variety 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.

Smith and others lamented the lack of a single patent filing system. “If patents are going to a deliver the promise they offer to investors around the word,” Smith said, and for patent offices to “keep their head above water, clearly everyone is going to have to adapt.”

Marc Adler, president of the Intellectual Property Owners Association, said industry would ideally like to see patent harmonisation in the application, search, and examination process. He said patent applicants can do their part by ensuring their application is consistent with their business strategy, and ensure the patent offices see all the best prior art that’s out there with the application.

“It is important to not be doing this on the fly while you’re prosecuting a patent application,” Adler said. “If you can’t tell me in one clear, concise sentence, maybe you shouldn’t be filing a patent.”

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