Gurry To Judges: We Must Work For Changes To Global Patent Treaty

WASHINGTON, DC – The Patent Cooperation Treaty is not performing up to par and is not helping enough to alleviate the stress on the global patent system, World Intellectual Property Organization Director General Francis Gurry said here Tuesday. The backlog theme was echoed by judges from across the globe who said their dockets are getting fuller with IP-related cases.

The PCT, which allows a patent application filed in one country to apply in signatory nations, was supposed to avoid excessive duplication in the patent review system. But there are 3.5 million patent applications around the world sitting unprocessed.

“This is not, from a systemic point of view, acceptable,” Gurry said at the Intellectual Property Owners Association’s (IPO) 5th annual international judges’ conference on intellectual property law. One of WIPO’s objectives in the coming years is to move the PCT “to a higher level of cooperation.”

Paul R. Michel, chief judge of the US Court of Appeals for the Federal Circuit in Washington, DC, added that a worldwide uniform system for searching prior art also is needed.

“In a world where the pace of commerce and news and innovation keep getting faster, the patent offices are getting slower,” Michel said. “That trend obviously has to be improved.”

WIPO has consulted with the private sector and 20 global patent offices filing the most applications with the PCT to find ways to get the system back on track. But a major stumbling block seems to be that too many countries want to stake their own claim on patent applications.

“We are experiencing difficulty in adjusting the territorial intellectual property system to the realities of the global economic behaviour and global use of technologies,” Gurry said, adding that there is a need for more “functional standardisation.”

WIPO is trying to get more countries on board with the PCT to help streamline the process. Chile and Peru recently joined, serving as an opening to Latin America penetration of the system; WIPO is in talks with Argentina and Uruguay. Its next target: Gulf and Arab countries. The goal is to get 160 countries on board; it now has 141.

“We think the first step [to reduce search time] is to bring national and international processing together,” Gurry said, particularly citing the Japan Patent Office and US Patent and Trademark Office, to “try to get a commitment to treat an international search the same as a national search.”

He added: “We realise this is going to take time.”

A “roadmap” for PCT improvements is on the agenda for the 4-9 May meeting [pdf] of the International Patent Cooperation Union’s PCT working group in Geneva. Japan is one country submitting reform proposals [pdf] to be considered.

Citing the 2008 settlement of a copyright dispute over Google’s online book project, Gurry also said the international community and WIPO are “so slow multilaterally” and need to do a better job of finding an effective approach to combating piracy and counterfeiting before policy issues end up in the courts.

“There is a real possibility that intellectual property law and policy …will not be made by law and policymakers. It will be made by the market and technology,” he said. “That’s not necessarily a bad result but I don’t think that’s a result we should ascend to.”

While further global patent harmonisation continues to elude the international community, patent reform may be within grasp in the United States. Key senators earlier this month agreed ironed out several critical sticking points in the bill, S. 515 [pdf], including the damages provision (lawmakers opted for the more favourable gatekeeper language, which gives more responsibility to the courts and juries to decide damage awards, based on the evidence produced), wilfulness and venue, among other topics.

Some stakeholders are meeting with Senate staffers this week on issues such as post-grant review, trying to close any technical loopholes they fear may grow into larger problems down the road in determining patent validity.

“It’s very clear the Congress is up to its shoulders, or eyeballs or whatever part of its anatomy” in trying to get patent reform passed this year, Michel said. It’s thought the bill could pass as early as this summer. Michel specifically touted the first-to-file provision, which many say would bring US patent procedure into line with most of the rest of the world.

IP Courts

The IPO judges conference, which featured judges from 32 countries, industry officials and other interested parties, probed issues such as transnational enforcement, patentable subject matter, as well as developing judicial and litigation issues.

One recurring issue was the topic of specialised IP courts. There have been many calls throughout the world for such courts to speed up and make more effective IP litigation, particularly because it is so costly. Litigation in the United States is known to be particularly painful on the wallet.

“Every country has its own procedures for dealing with patent infringement in their own way,” Judge Robin Jacob of the Royal Courts of Justice in London said wryly. “It is a tribute to the strength of the US economy that it can withstand its patent litigation system.”

Mexico recently instituted an IP section in its tax court, while China is exploring the creation of an Intellectual Property Appellate Court in Beijing.

But several countries, including the United States and India, said they are so far resisting specialised courts. India has, however, created “exclusive” courts for trying intellectual property matters and some more generalised cases. These courts have helped increase the disposal rate of cases, said Judge Mukundakam Sharma of the Supreme Court of India in New Delhi. Judges then have intellectual property expertise, as well as proficiency in other areas.

“We believe that with that, with a picture of both, he [judge] will definitely prove to be a better judge,” Sharma added.

WIPO Transition

When Gurry became WIPO director general last October, he left vacant his seat as deputy director general responsible for patents and other matters. Michel said this “will be a very important post with great potential.” He later told Intellectual Property Watch that it’s absolutely vital this person have vast international experience and must have name-recognition.

“It can’t be anyone you’ve never heard of,” he said. “Anybody can sit in the seat, but can they accomplish anything?”

One person said to be a top contender for the post from the United States is Matthew Bryan, director of the PCT legal division sector of the PCT and Patents, Arbitration and Mediation Center, and Global Intellectual Property Issues at WIPO.

Bryan told Intellectual Property Watch that he would be “flattered” to be considered, but that there are many others qualified for the post, as well. “I’d be honoured,” he said, adding that filling Gurry’s shoes would be “very daunting.”