Top IP-Owning Nations Claim Faster Patent Processing; Near Harmonisation Deal

By Liza Porteus Viana for Intellectual Property Watch
BOSTON – Japan next month will roll out a new patent process which aims to examine a patent application anywhere from two weeks to one month from receipt of request. Meanwhile, the United States said patent harmonisation among top IP countries is near, and a client privilege treaty was discussed.

Japanese Patent Office Commissioner Takashi Suzuki told those attending the 41st Congress of the International Association for the Protection of Intellectual Property (AIPPI) in Boston that the system will expand the outsourcing of prior art searches and improve examination efficiency by increasing the use of technology to reduce paperwork.

“There has been a strong demand for a more expeditious patent examination,” said Suzuki, who took office on 11 July.

Japan is also working to create a technological environment that allows users to seamlessly access patent information and other technical reports from around the world, and is encouraging universities and research organisations to work together to form a type of “R&D consortium.”

The JPO is now piloting a “community patent review,” its version of a peer-to-patent system that opens up the patent process to public participation. The country is also drafting a proposal to establish the Innovation Network Corporation of Japan to encourage the private sector to establish IP businesses that support private-sector enterprises. This corporation will be a for-profit public-private partnership to be established in 2009.

The JPO also has been on the forefront of expanding the Patent Prosecution Highway (PPH) – which allows an applicant whose claims have been determined patentable in one patent office to have the corresponding application at the other participating patent office jump ahead of the line to be examined. JPO has been working with the Danish Patent and Trademark Office, UK Intellectual Property Office (UKIPO), as well as the German, Korean and US patent offices to expand the PPH. Discussions are ongoing with other nations as well.

“It is important to expand such programmes worldwide,” Suzuki added.

The USPTO recently announced that it was expanding its pilot PPH with the UKIPO. In January, the requirements for the PPH were changed to allow certain applications based on Patent Cooperation Treaty (PCT) filings to qualify for participation in the pilot. The two offices will periodically review the PPH to determine whether and how the programme should be fully implemented at a later date.

Harmonisation Near?

Suzuki also said the JPO “will do the utmost to …take an active role” in working to harmonise the various patent systems throughout the world. Discussions among various countries on harmonisation have been ongoing for years.

USPTO Chief Jon Dudas said the so-called Group B developed countries (the only non-geographic grouping at WIPO) is nearing an agreement on a smaller package of substantive patent harmonisation issues.

“I think we’re very close – very, very close to having full agreement on that package,” Dudas said.

The package has been said to include the US position that there must be movement toward a first-invent-to-file system, and a grace period. The ideal grace period approach for the United States is 12 months without a declaration.

“I’m partial to the idea that those things we agree on now … let’s move forward and have that harmonisation done,” Dudas said. Any other issues that need to be resolved can come later, he added.

But Alison Brimelow, president of the European Patent Office, expressed frustration that so many rounds of negotiations on harmonisation have taken place while other problems such as massive patent backlogs in patent offices continue to clog the system.

Patent offices of the world really need to establish “functional cooperation” with each other to reduce these backlogs, despite the lack of a consensus on harmonisation, she said.

Brimelow said there are “some elements of agreement” coming forth within the so-called trilateral – the EPO, JPO and USPTO – as well as from discussions with emerging patent powers Korea and China, on how to reduce those backlogs.

“Large backlogs are the antithesis of the purpose for which we were established,” Brimelow said, adding that regional and national patent offices can help by having “sensitive discussions” with each other on how to better cooperate and reduce duplicative work.

Patent offices should also share the financial burden of new tools and processes that can help reduce that work, she said. “Where we go next is expensive. Why the hell do we do it separately?”

Brimelow referenced a May meeting of patent office officials from the EU, Japan, Korea, China, and United States in Washington, dubbed “the Washington process,” in which much focus was on how to eliminate duplication of work completed in another patent office. The goal should be on how to refine and make more efficient current processes and mandates, rather than create new ones, she said.

“When we talk about better working together, can we please not forget that we have an institution that is pretty well established and it’s called the PCT,” Brimelow said. “That particular mousetrap I think just needs to be dusted, not reinvented.

The EPO also has proposed to introduce a claims fee to reduce the occurrence of an excessive number of claims being recognised in many countries. Certain applicants file patent applications with a large number of claims to create legal uncertainty about possible later granted protection.

Client Privilege

Discussed later in the day was the Client Privilege in IP Professional Advice (CPIPPA) treaty proposed to the World Intellectual Property Organization by AIPPA in 2005 to create a mutual understanding from country to country of attorney-client privilege in IP-related communications. WIPO and AIPPI held a conference on CPIPPA in Geneva in May, which concluded, among other things: where in the world attorney/client communications are protected; the need for full and frank disclosure when it comes to a client discussion issues with either an IP lawyer or IP adviser; and the need for a global rationale for such a treaty.

“Some amazing consistencies exist in the background by way of which privilege or professional secrecy, as it’s called in some places, are treated,” said Michael Dowling, an Australian lawyer and chair of the AIPPI task force charged with working on the privilege issue.

Dowling and others agreed that a number of provisions must be included in any international agreement on privilege: a consideration of the clients’ needs; freedom for the client to communicate with any IP experts they want, from country to country without loss of protection from disclosure; and a recognition that different countries and regions have their own laws or practices on privilege.

“There are local issues and there are international issues,” said Buck De Wolf, a lawyer with General Electric. “To the extent we are trying to agree on the level of protection … that’s really something that’s going to impact each country and each jurisdiction in that country differently and that’s going to be a very difficult thing to negotiate.”

De Wolf said countries should not have to radically alter their privilege laws to conform to any such agreement. He said the United States, for one, will be reluctant to carve out intellectual property, specifically, from other privilege laws dealing with issues such as tax or labour.

“I think the US is not going to agree to anything if it’s not something we’re already doing,” De Wolf said.

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