Countries Begin Push To Reduce Differences In Patent Laws

Some of the leading patent-filing nations this week renewed an effort to harmonise procedures for filing patents in their national offices.

“There’s more urgency in terms of the need for harmonisation,” Michelle Lee, deputy director of the United States Patent and Trademark Office (USPTO), told UN journalists on 24 September. This is particularly the case from the industry perspective, she said, noting that she recently came from industry.

Korean Commissioner Kim and USPTO Director Lee

Alongside this week’s annual General Assembly of the World Intellectual Property Organization, delegations held numerous other meetings.

Among these was a meeting of the Group B+ (referring to the WIPO developed country group plus others such as the European Patent Office), at which there was “unanimity on the focus of [patent] harmonisation initiatives and taking a very practical look at what we might be able to do and deliver in a very short term,” said Lee.

In her prepared remarks to the Group B+ meeting on 23 September, Lee said that the IP5 offices (European Patent Office, Japan Patent Office, Korean IP Office, China IP Office, USPTO) meeting in Korea in June had formed a patent harmonization experts panel (PHEP).

The IP5 panel identified three areas for potential procedural harmonisation: unity of invention, citation of prior art, and written description/sufficiency of disclosure. The IP5 discussions are at a “very early stage,” Lee said.

The five large IP offices are also focused on further development of the Patent Cooperation Treaty (PCT) system, she said, particularly promoting use of the PCT by small and medium enterprises. Other efforts are potential work plans on work-sharing between international authorities and national offices, and collaboration to improve the quality of PCT international searches and preliminary examinations.

And she mentioned further studies on procedural harmonisation issues and collaboration with the IP5 industry group and WIPO.

Lee told an industry invite-only event in prepared remarks this week that “a truly harmonised IP system benefits all of us, allowing competition purely on the grounds of innovative thinking, and driving advances in personal technology, healthcare, and other industries in ways that will transform our lives beyond our imagining.”

“When we realise that fully harmonised IP world, it is then that we truly will be able to say we are living in the most inventive period in history,” she said.

Speaking to journalists, Lee said, “There are very few companies these days who make a product or offer a service and only intend to sell it in the United States. So what we’re hearing from our stakeholders is a very strong desire. A lot of our discussions this week with my peers focused on what are the pragmatic deliverables, what can we achieve in this very broad and ambitious goal of harmonisation.”

“There are gains to be had on a whole range of issues including substantive all the way down to procedural,” she added. “Changes in either of these categories will benefit our innovators and our companies.”

With globalisation, companies are no longer filing only in the United States but in multiple jurisdictions, according to Lee. “The patent systems in each country grew up on its own, so there is a tremendous amount of duplication as you can imagine … nobody’s fault, that’s just the way the system grew up, in terms of the paperwork you need to file, the examination and searches that are conducted in each of the patent offices worldwide, on more or less the same invention.”

Patent examiners worldwide lack a common way to access files electronically, so the USPTO and other offices are pulling the information together “so examiners in various countries can access the same files, can share search results,” Lee said, adding, “I’m not talking rubber stamping but I’m saying sharing and using it for purposes of streamlining and efficiency.”

Shira Perlmutter, director of the USPTO Office of Policy and International Affairs, added, “We’re not trying to harmonise everything about patent laws. There are just these particular areas where we see problems for applicants looking to advance their innovations internationally.”

The list of countries to attend the Group B+ meeting were: Australia, Austria, Belgium, Canada, Czech Republic, Denmark, European Commission, EPO, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Japan, Netherlands, New Zealand, Norway, Poland, Portugal, Romania, Slovak Republic, Spain, Sweden, Switzerland, United Kingdom, and United States.

US Priorities

“We’re really trying to accomplish several different things this week,” Perlmutter said at the UN press briefing.

At WIPO, members are discussing what the agency’s program should be for the next year, she said, and are not negotiating on substance this week. “We’re trying to figure out what the organisation will be doing, what the member states will be doing, what meetings will take place.” And alongside the WIPO meetings, the US had many side meetings, she said.

“We’ve got the framework of treaties and we’re always trying to move forward at WIPO to see what norms need to be set, what makes sense and what doesn’t make sense,” said Perlmutter. “And then there’s a tremendous amount countries can do together on a very pragmatic, practical basis to help each other and to improve the system for all of our applicants who are interested in international protection as well as domestic protection.”

Asked how confident the United States is in WIPO as an agency able to handle US concerns, Lee simply answered that a group met with the director general and “he seemed very receptive to some of our viewpoints.”

The USPTO officials were asked about the selection of John Sandage of the US as WIPO deputy director general for the patents and technology sector, given his lack of experience in IP issues. Perlmutter answered simply that they were “pleased” that WIPO Director General Francis Gurry chose an American for that role, and that there is plenty of patent expertise in the organisation.

Perlmutter said that key objectives for US include a strong interest in improving registration systems at WIPO. As well, there a number of processes at WIPO that the US would like to see through to completion, mentioning specifically the proposed copyright treaty on broadcasters’ rights and the proposed design law treaty.

The US is also interested in “the organisation’s role as a think tank, as a training facility, as an educator,” she said, and “there’s a huge number of things that WIPO does that are extremely valuable for us as part of the international system.”

Bilateral US MOUs

This week, USPTO planned to sign two memoranda of understanding, one with Australia and one with Korea, which Lee called “historic.”

USPTO and the Korea IP Office on 24 September announced a “major expansion” of their cooperation in classification activities.

The agreement “is designed to improve the patent granting process through streamlined access to patent documentation,” a press release said. Under the cooperation, KIPO will “greatly expand” the number of documents included in the Cooperative Patent Classification system “by classifying its patent applications and utility models.”

Image Credits: Eric Bridiers, US Mission