Trilateral IP Offices Under New Pressure To Harmonise Patent Processing

By Dugie Standeford for Intellectual Property Watch
THE HAGUE, NETHERLANDS – Patent offices are facing heat from industry to make good on promises to coordinate global processing of patent applications. Despite years of talk of streamlining the handling of applications, reducing duplication and creating more reliable international patents, agencies have failed to move ahead, Air Liquide Vice-President Thierry Sueur told top IP officials Thursday. He spoke at the 13 November Trilateral User Day in The Hague, Netherlands.

Trilateral Co-operation members are the European Patent Office (EPO), Japan Patent Office (JPO) and United States Patent and Trademark Office (USPTO). The trilateral group holds its annual conference here on Friday.

The existing patent system is not sustainable in its current form because it fails to process applications in a timely manner, produces work of uneven quality and is expensive, industry representatives said. They agreed with agency officials, however, that users share responsibility for making the regime work.

Patent office chiefs said they are working on the problems but acknowledged they must try harder. One unresolved issue is whether to work through the World Intellectual Property Organization Patent Cooperation Treaty (PCT), the Patent Prosecution Highway (PPH), a combination of the two, or some other route. Both provide a way to apply patent processes internationally.

The “IP5,” which includes the EPO, USPTO, JPO, Korea Intellectual Property Office and the State IP Office of the People’s Republic of China, recently agreed to cooperate on a sustainable global patent system, said EPO President Alison Brimelow. The trilateral group has tried for some time to make its work-sharing more cooperative, but has not “quite managed to hack it,” she said. Nevertheless, she said, the “PCT remains the best game in town.”

Trilateral agreements cannot replace the PCT, said Merck, Sharpe & Dohne Managing Counsel, European patents Tony Rollins. The patent system must operate globally and cooperatively, and bilateral treaties such as the PPH are inherently “subglobal and suboptimal,” said David Kappos, vice-president of the Intellectual Property Owners Association and IBM vice-president and assistant general counsel for IP law and strategy.

Kappos urged patent offices to “embrace the PCT as the framework of choice,” set patent quality standards, and encourage trust and confidence in the PCT. Agencies should use 21st century tools such as Wikis and blogs to examine applications in real time, he said.

The Japan Intellectual Property Association wants the “four sames,” said President Hirohiko Usui: Application formats, searches, examinations, and global patent grants. The PPH is an accelerated examination process. Japan, which has put the PPH fully in place, wants authorities to use it as a complementary means to enhance the PCT system, Usui said. He acknowledged, however, that it suffers “teething problems” that discourage other agencies from making active use of it.

The USPTO had only 810 PPH requests as of 1 October, said Director Jon Dudas, under secretary of commerce for IP. He stressed the need for patent offices to trust one another’s work, saying the PPH is one of several ways to do that.

But former American Intellectual Property Law Association Executive Director Michael Kirk said that over 200,000 PCT applications were filed between Japan and the US in the last two years compared to around 1,000 PPH requests. Building trust is fine, he said, but the focus on PPH, which essentially just allows inventors to obtain a patent quickly in another country, is diverting attention from the PCT, he said. “Rome is burning” and it is unclear whether there is a way to bridge the PCT and the PPH to make the latter an effective work-sharing vehicle, he said.

Political Will Needed

Everyone agrees that the system is dysfunctional and that the cure calls for some form of transnational cooperation, said WIPO Director General Francis Gurry. The two main candidates are the PCT and PPH, he said. The PPH is a procedural arrangement similar to the PCT, but at the moment it is bilateral. It should be multilateral and include international work product under the PCT, he said.

The PPH has other problems, Gurry said. It does not produce “any systemic benefit” at this point, while many offices use the PCT’s international work product, deficient as it may be. The PPH also lacks a common database, and the volume of PPH requests filed is “rather insignificant,” he said.

The time for talk is ending and decisions are needed soon, Gurry said. The key question is whether the goal is to lighten the workload and speed applications or to create a functional, sustainable system that will not create the kind of backlog seen now, he said. The solution could be a single path or multiple routes, so long as everyone agrees on it, he said.

“Political resolve is necessary,” Gurry said. He urged industry to lobby governments for action. In the short term, WIPO believes a focus on the quality of the international search product is key, he said. In the long run, there should be agreement on an international procedure under the PCT that includes common applications, searches and tools, Gurry added.

Dugie Standeford may be reached at info@ip-watch.ch.