US Patent Law Seen Opening Door To Global Harmonisation At WIPO

Just a week after US patent reform was signed into law, the Symposium of Intellectual Property Authorities opened with an air of celebration on 22 September at the World Intellectual Property Organization (WIPO). During the opening session, several keynote speakers congratulated United States Patent and Trademark Office Director David Kappos for the long-awaited legislation helping to harmonise the American patent process with the rest of the world.

The Authorities programme is here.

The symposium is meant to provide a forum for policymakers, industry leaders and other stakeholders to share their ideas and experiences to improve services provided by IP authorities and ultimately, as WIPO Director General Francis Gurry said in his opening remarks, “to look at the future vision of IP.” The annual event was launched in 2009 and is held immediately prior to the annual WIPO General Assemblies, running this year from 26 September to 5 October.

During his opening speech [doc], Kappos argued that the new US law, which includes a version of the globally common first-to-file patent grant system, would be a boon for international efforts to harmonise IP systems.

“With our IP systems so varied,” Kappos said, “innovators and patent offices around the world are forced to repeat the same work time and time again, countless times a year in different patent offices, ultimately wasting billions of euros, or whatever other currency you are operating in, clogging the patent pendency pipeline, while devaluating that currency of innovation.”

Country Collaboration

The increasing number of patent filings, especially international filings, has put stress on IP systems across the globe. During the two-day symposium, many of the IP authorities argued that improving international collaboration and the efficiency of IP systems would alleviate pressure on the patenting process, ultimately helping to promote invention and innovation.

In an example of international patent office collaboration, WIPO presented the first experiences of a work-sharing project. WIPO CASE (Centralized Access to Search and Examination system) allows for the sharing of confidential search and examination information between IP offices. The so-called Vancouver Group, which includes Australia, Canada, and the United Kingdom, is now successfully using the CASE system. PROSUR (a Latin American regional cooperation system on IP), which includes Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay, is currently working with WIPO on a pilot.

In an interview, William Meredith, director of the infrastructure modernisation division at WIPO, was optimistic about the project’s status and its future prospects. “At the moment, it’s regionally based,” he said. “But there is no reason why it shouldn’t become more global over time. Perhaps these regions might merge or perhaps one of them might become more globalised.”

Professor Ian Hargreaves, who led an independent review into how the IP system could better drive growth and innovation in the UK, had other suggestions as to how best to improve current IP systems. In his much-anticipated intervention, he presented some of his report’s recommendations, which he said were also relevant outside of the UK, and suggested that IP authorities didn’t need to completely change their course – just make a “20 to 25 degree” course correction.

The Hargreaves report is here.

One of his most notable suggestions is the creation of a Digital Copyright Exchange that would make it easier for people interested in using protected content to get copyright clearance. The report says that the Exchange “will make it easier for rights owners, small and large, to sell licences for their work and for others to buy them.” It was a suggestion that solicited delegate response. Computer & Communications Industry Association’s Geneva Representative Nick Ashton-Hart said his association “cheers” the idea, saying that rights management was “not fit for music in the digital age.”

Healthy Debate

But consensus amongst authorities on best strategies for improving IP systems was not always found at the symposium. There was some debate between stakeholders and policymakers during a panel session on what databases, tools and search technologies would best serve industrial design infrastructure. Managing Partner Shane Smyth from F.R. Kelly & Co., a patent and trademark firm in Dublin, called current design registration systems “complicated” during his presentation.

He said that although “there is no problem to register a design, getting a valuable design registration could be difficult.” He went on to say that searching for a design was “a nightmare from the practitioner’s point of view” and that process could be so timely that the cost of search was “beyond the budget for a lot of his clients.” In terms of ways to improve the system, he suggested a central design registry, better text descriptions, greater information on design novelty and perhaps cross-search criteria.

In an interview following the panel, Grégoire Bisson, head of the industrial designs registry at WIPO, said that he was “disappointed” by some of the suggestions he heard during the panel. “What I am trying to say,” he explained, “is that hearing someone from an office with the view that yes, we should raise the threshold of formalities, so that the databases could provide for more searching fields, is a view that I don’t share.” He is concerned it will add complexity to the process.

Bisson favours the development of image recognition software, which he thinks would provide a better solution to the design community. “It would not only allow people to know whether or not their design is encroaching on the rights of a registered design, but it would also allow them to assess if there is something out there, not in any design register, but that would kill the novelty of their design.” Although the WIPO official did not agree with some of the suggestions presented during the panel, he said he was pleased to have gained a greater awareness of the diversity of opinions in the field.

Other panel topics included global solutions for patent prosecution, global databases, copyright infrastructure, services for access to knowledge and machine translation in overcoming language barriers. Covering a wide range of IP-related topics, the symposium provided the occasion for IP authorities to update their counterparts on challenges they face and strategies for overcoming them. A gathering which Yo Takagi, WIPO assistant director general, described as important during his closing remarks. “We have to get together every year to make sure that we are moving in the right direction – or if we have to change course 20 to 25 degrees.”