Global Patent Harmonisation Proceeding Outside WIPO – And Gently Within

For years, the developed countries that own the vast majority of the world’s patents – and therefore pay the majority of the revenues of the World Intellectual Property Organization – have looked unsuccessfully for a way to increase harmonisation of the global patent system through the UN agency. Developed countries have moved forward on their own, while WIPO is taking a gentle approach, encouraging member states “look below the headline issue” to a more “granular” level.

This conclusion could be drawn from presentations made at the Creating and Leveraging Intellectual Property in Developing Countries conference held in Durban, South Africa from 17-20 November.

Mark Guetlich, senior counsel for international policy and government affairs at the United States Patent and Trademark Office (USPTO), told the conference that the focus has been on substantive law uniformity. He said that they look across boundaries with other countries to see how they can make them more uniform, and find frequently that they can make changes to policies without making difficult changes to laws.

A good example of a “multilateral” effort across IP offices is the Patent Prosecution Highway (PPH), he said, which originated in Japan and quickly spread to 27 countries. Participating countries share results of examinations and lower costs in what is considered a starting point. They look at how they share work without giving up the sovereignty of their countries, he said.

Another example is the Cooperative Patent Classification programme launched earlier this year, harmonising the US and European systems, Guetlich said. Now the so-called IP5 (US, EU, Japan, Korea, and China), the five largest IP offices in the world, are “on board” to adopt this system as IP roadmaps and operational projects permit, he said.

Another effort Guetlich mentioned was on translations. The US and China have shared their entire databases of all granted patents so they are full-text access searchable. It is machine translated, so there are necessary disclaimers, but examiners “get a lot closer” to what they are trying to search, he said. Now Japan is on board to incorporate the system.

Guetlich also mentioned the “huge” conversion of the United States to a “first inventor to file” system that includes a prior art grace period he said protects inventors from their own disclosures. And he noted that in 2014, the US will implement the Hague Treaty on the International Registration of Industrial Designs and the WIPO Patent Law Treaty.

Hans Sauer, deputy general counsel at the Washington, DC-based Biotechnology Industry Organization (BIO), said there is a “necessity” for global harmonisation of patenting.

“A commercial contract cannot mean one thing in one country, and another thing in another place,” he said, adding a question whether a patent should mean a different thing in different countries. Sauer referred to “new uses for known substances” (so-called evergreening), and to special requirements for inventive step in the patent granting process.

WIPO: Taking it to the Granular Level

James Pooley, WIPO Deputy Director General responsible for patents, comforted the audience in South Africa that the organisation does not propose uniformity of standards.

“We recognise the value of common standards, but embrace the phrase that one size does not fit all,” he said. “IP laws are an expression of national sovereignty,” and IP is a set of laws that countries can use or not as they want to.

However, he said, there is an increasingly connected market, so national discussions typically take into account conversations taking place outside. Pooley came to WIPO as a highly successful patent attorney from the United States.

What WIPO proposes, Pooley said, is high quality work. They support work toward better search and examination of data, and make materials available to national offices, as well as supporting technical assistance.

Meanwhile, Pooley said, the word ‘harmonisation’ in Geneva is “fraught,” as it has raised concerns among developing countries. Worksharing between offices sometimes is seen as “creeping harmonisation,” he said, but developing countries may see benefit in it as well.

Regional cooperation among patent offices that are like-minded on IP policy is a form of worksharing, he said. During the conference, it was noted that Brazil, Russia, India, China and South Africa (the BRICS countries) have signed and are implementing an IP cooperation roadmap.

There are now 148 countries in the Patent Cooperation Treaty system that WIPO manages, with some 200,000 patent applications coming through the PCT system. If each office did unique examinations, there would be millions of examinations, Pooley noted. Under the system, a country can rely on the outputs of the other offices.

For developing countries, the use of a grace period might be a way to help give small and medium-sized businesses “a better run” at the IP office because it allows them to recover from mistakes in disclosure.

He said countries might look at standards and consider whether they or their region or group of like-minded countries have an advantage in considering that standard.

“It might be useful to dip below the headline issue of harmonisation and find value there,” Pooley told the conference. “Let’s see what the specific issues are.”

He said he has heard there has been “a disappointment” among developing countries with the 1994 World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). And WIPO recognises there is concern that harmonisation might not be in their interest.

But, he said, if they approach the subject at “a more granular level,” they might see some benefit.

When asked about South Africa’s current draft plan to introduce a substantive patent examination procedure, Pooley said he would not suggest whether South Africa should have examination or not, but said the country has a very good judicial system for dealing with cases afterward.

Guetlich responded that the United States has experience it can share with South Africa. “We’re not here to suggest how it ought to be done,” he said, “but just what has worked or not worked.”