New National-Level Programmes Echo WIPO Patent Treaty

By Liza Porteus Viana for Intellectual Property Watch
NEW YORK – The Japanese Patent Office (JPO) in April will introduce a new policy called JP-First, which aims to release patent examination results of applications first filed with the JPO to major patent offices throughout the world, including in some developing countries. The initiative and others could be steps toward allowing patent filers to bypass an established international treaty on patents, sources said.

JPO Assistant Director Masayuki Shinohara, who called JP-First a “hot topic,” outlined how the programme will work to those attending an intellectual property law conference at Fordham University in New York City on Friday. The JPO hopes to provide examination results to applicants within 30 months or less from the JPO filing date. The programme is applicable to applications filed on 1 April, 2006 or later. The goal is to increase work-sharing among patent offices and to make the patent-approval process more efficient, particular in offices of second filing.

“It appears they’re going to be giving benefits both to Japanese applicants who don’t want to use the PCT and also to other offices of a cooperative programme,” said John Pegram, senior counsel at Fish & Richardson, an IP and technology law firm in New York City. “It will be very interesting to see how that progresses.” The PCT is the World Intellectual Property Organization Patent Cooperation Treaty, which in recent years has seen record levels of filings and has provided substantial revenues to WIPO.

The JPO also in 2009 will begin limited use of a Common Application Format (CAF), an application agreed to by the “trilaterals” – the JPO, US Patent and Trademark Office (USPTO) and European Patent Office (EPO). This format allows an applicant to prepare a single application to be accepted by the patent offices in each country in which an application needs to be filed without the need for formality amendments. The JPO will be fully using CAF in 2011.

Shinohara also said the global network of national patent offices participating in the Patent Prosecution Highway (PPH) is expanding; the German Patent Office signed on last week. The PPH is a tool set up between the JPO and USPTO in which an applicant receiving a ruling from the JPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. The United States and Japan are global leaders in patent applications.

The EPO does not participate in the PPH with Japan because of differences in application procedures. The EPO and USPTO will test a programme similar to the PPH, scheduled to launch in September. Peter Vermeij, EPO vice president, said although “reducing the workload is very important for all of us” and that some countries are coming up with “interesting proposals,” the European Union’s member states “are getting lost in all of the terminology and other proposals on the table.”

Australia’s intellectual property office and the USPTO on Monday announced that they will launch a new trial PPH in April. The USPTO in January announced two PPH pilots with the intellectual property offices in Canada and Korea, as well.

Vermeij is scheduled to deliver a paper to member states in June on where the EPO – and the other trilateral offices – stands on workload reduction and progress made. “We’re still in a trial-and-error process,” even though the three patent offices have been working together for 12 years now, Vermeij said.

Copyright Pressure on Canada

Government officials and academics also discussed copyright developments in Canada. US experts argued that Canada is not doing its part to crack down on piracy, while the Canadians said they are actually setting the bar in some areas in terms of protecting copyrighted works.

“This is really a question of whether there’s adequate and effective protection for right holders under the law enforcement regime of this country,” said Steven Metalitz, counsel to the International Intellectual Property Alliance, which represents all the major US copyright industries. “It’s time to move Canada to the priority watch list.”

The US Trade Representative releases an annual “Special 301” report on the adequacy and effectiveness of intellectual property rights (IPR) protection by US trading partners in an effort to combat international piracy. There were 43 countries on last year’s priority watch list [pdf], which included China, Russia, India, Turkey and others. Thirty trading partners were on a lower-level watch list, including Canada, Brazil, Ecuador, Indonesia, Italy, Mexico and Poland. USTR is set to release its 2008 list on April 30.

Metalitz argued that Canada should be on the higher list because after years of being on the lower list, its accountability problems have worsened. The IIPA wants Canada to, among other things [pdf]: enact stronger enforcement measures, create strong incentives for Internet service providers to help combat online piracy; and enact legislation to bring Canada into full compliance with WIPO Internet treaties.

“That is not the tail wagging the dog. This is the dog we’re talking about, it isn’t hunting because … the problem of online piracy in Canada is out of control,” Metalitz said. “Somehow, despite many missed deadlines, they’re still not forthcoming … a country that won’t bring its laws up to the law of the WIPO Internet treaties” adopted by every OECD country cannot possibly have adequate enforcement of anti-piracy measures, he added.

Howard Knopf, counsel with Macera & Jarzyna, LLP in Ottawa, said Canada is getting “huge pressure from the United States government and big lobbying organisations” for more copyright enforcement. The Canadian recording industry, for example, “want us to do what they think is the right thing, which is to enact a Canadian version of the DMCA,” he said, referring to the Digital Millennium Copyright Act the United States enacted in 1998. “It’s all very controversial.”

Knopf said Canada in some ways provides better protection than the United States, including: getting rid of compulsory licences, including the mechanical licence for sound recordings, and respecting the independent right of creators to own copyright, in comparison to the US “work for hire” doctrine. In addition, Canadian copyright collectives are subsidised by the government, and a full-time copyright board exists with many resources behind it and heavy policy-making power, he said.

The idea that Canada has the weakest copyright protection of all the major industrial countries is “nonsensical,” Knopf said.

In other news:

• The US Section 108 Study Group (named after Section 108 of the US Copyright Act of 1976, which provides libraries and archives with the right to use copyrighted works) released a major report [pdf] to the public. The independent committee of copyright experts is charged with updating for the digital world the Copyright Act’s balance between the rights of creators and copyright owners and the needs of libraries and archives. The panel was convened by the National Digital Information Infrastructure and Preservation programme of the Library of Congress and by the US Copyright Office. Marybeth Peters, US Register of Copyrights, who said she hopes the report can be used to make legislative change. “It’s a magnificent step forward,” she said.
• Also on the issue of copyright, Bernt Hugenholtz, director of the Institute for Information Law at the University of Amsterdam, recently released a report entitled “Conceiving an International Instrument on Limitations and Exceptions to Copyright.” [pdf] The report was co-authored by Ruth Okediji, a professor at the University of Minnesota Law School. “We really need standardisation here – whether you are a right holder or a user,” Hugenholtz said.
• The US Congress is taking up the orphan works issue. Orphan works are copyrighted work whose owner cannot be found. Peters testified at a 13 March hearing, where she advocated a framework whereby a legitimate orphan works owner who resurfaces may bring an action for “reasonable compensation” against a qualifying user. “It is back on the table in this Congress,” said Oliver Metzger, a policy planning advisor in the US Copyright Office. That office has proposed one exception to the rule of reasonable compensation: A safe harbour for certain limited uses performed without any purpose of direct or indirect commercial advantage.
• The Copyright Board of Canada soon will issue a paper outlining the results of their orphan works process/rules for the past several years; Canadian officials say they track down about 50 percent of works owners.
• Europe is debating several possible ways to deal with orphan works, which include: an extended collective management of the works, where collecting societies collect money for missing owners on the works and keep it in escrow in case he/she ever surfaces; a copyright exception for orphan works, which Tilman Lueder of the European Commission called “far beyond anything we’ve heard up to now,” and a licensing agreement system where an owner who shows up agrees on a future-use system with the exploiter of the work. Some have suggested the European Commission’s copyright division be the central body that would licence such systems. “The initial response is ‘no thank you’ – that would be a rather strange task for us to be a public body licensing orphans,” Lueder said.

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