Work-Sharing Between Patent Offices: Key To Reducing Backlog, Or Harmonisation Threat?

Quality of patents is an issue that has been repeatedly discussed at the World Intellectual Property Organization committee on patent law, which is meeting this week.

Developed and developing countries do not share the same idea on the way to achieve patent quality. Developed nations favour work sharing and harmonisation of the patent system, while developing countries consider any attempt at harmonisation as a threat to their sovereignty in the area of patent granting.

The 21st session of the Standing Committee on the Law of Patents (SCP) is taking place from 3-7 November.

On 4 November, the SCP addressed the issue of quality of patents, and in particular held an information sharing session with several developed countries presenting their national experience of work sharing between IP offices.

Developed countries are generally of the view that work-sharing is essential to ease the work of patent examiners and avoid unnecessary duplication of work. Developing countries are wary of possible harmonisation attempts of patent laws through work-sharing.

Group B developed countries said, “There is nothing to be afraid of” since work-sharing has no consequence on the sovereign rights of countries to decide on their own patentability criteria.

Several developed countries referred to a proposal [pdf] by South Korea, the United Kingdom and the United States on work-sharing between IP offices to improve efficiencies of the patent system, presented at the last session of the SCP in January.

The proposal suggested to: “a) Dedicate a page on the WIPO website to work sharing and collaborative activities between patent offices….; b) Organize annual conferences, on the margins of the SCP sessions, on international work sharing and collaboration to share national and regional experiences…”

Some developing countries, such as Iran and Egypt, said they were concerned about the lack of clarity in the concept of patent quality. Iran said it is “against the idea of harmonisation on the quality of patents,” and remarked that the criteria for patentability might be different across countries. India concurred in a long statement going through the history of the discussion at the SCP.

Kenya, on behalf of the African Group, referred to the statement of the African Group [pdf] (page 27) at the 20th session of the SCP, which mentioned that harmonisation of practices in the field of patent law might be prejudicial to the provisions of flexibility in national legislation on patents in various countries. The Kenyan delegate said the SCP should ask three questions when discussing the issue of patent quality: Is this necessary? Is it feasible? To whose benefit?

Four Countries Present National Experiences

Australia, the UK, Japan and the US presented their national experiences with work-sharing and the benefit they are yielding from this collaboration between IP offices.

Victor Portelli, for the Australian IP office, tried to deflect worries voiced by some developing countries. He said in particular that most of the work of patent examiners was to examine and search prior art, which is a tedious task, so why not benefit from the work already carried out by another office.

He said patent filings continue to grow and if Australia had not entered work-sharing schemes, the Australian IP office, although staffed with 400 patent examiners, would not be able to cope with the increase of work. He went on to describe the different work-sharing initiatives that the Australia IP office is part of, such as: the WIPO-run Patent Cooperation Treaty, the Vancouver Group (including the IP offices of Australia, Canada, and the UK), and the Patent Prosecution Highway (PPH).

Australia also started collaboration with the New Zealand patent office for a proposed single application and examination processes for New Zealand and Australian patent applications. The patents would still be examined according to the own national laws of the two countries, he said.

He also mentioned the IP5 PPH, which is a pilot project between five IP offices: European Patent Office, Japan Patent Office, Korean Intellectual Property Office, the State Intellectual Property Office of China, and the US Patent and Trademark Office.

The IP5 PPH pilot programme was launched on 6 January for a period of three years, ending on 5 January 2017.

Some developing countries, such as Kenya, remarked on the need for capacity building of IP offices in developing and least developing countries, so they are able to make a valid judgment on patent applications.

Paraguay said the country is involved in work-sharing with other offices and in sub-regional initiatives.

The UK, presenting its experience in international work-sharing and collaboration, said the demand in patent applications has doubled in 15 years and there is an estimated four million applications awaiting examination worldwide.

The applications are more difficult to process, he said, with more prior art to research, in different languages, and with the additional challenge of the rapid advance of the technology. Delays create uncertainly for innovators, investors and competitors, he said, designating work-sharing as one of the solutions to remedy those issues.

The UK delegate said the UK patent law has been amended to allow the sharing of information before publication of a patent under certain circumstances. The amendment has been introduced on 1 October and the UK, still working on details of implementation, hopes to agree on the first work-sharing arrangement under this provision in 2015, the delegate said.

The Japan Patent Office has been working toward expanding the PPH network, the Japan delegate said during his presentation focusing on the PPH. He said the PPH is an accelerated examination system. The merits of the PPH for users, he added are high speed, low cost, and high predictability.

The USPTO representative also remarked on the patent application backlog in his presentation on work-sharing and the PPH. The PPH, he said, helps offices grant higher quality patents, and helps access specialised capabilities, whether it is languages, tools, prior art collection, or technical specialisation. The accelerated examination is not a goal in itself, he said, just a positive effect of the PPH.

PCT PPH Update

WIPO presented the updated webpage of PCT-Patent Prosecution Highway Pilot (PCT-PPH), which was undertaken following a request made by member states. The pilot project includes 17 IP offices.

Group B is keen on continuing work in the SCP on work sharing. Some developing countries expressed reluctance on further work on the issue in the absence of a clear definition of the quality of patent. Pakistan suggested further discussion on opposition systems, describing them as “imperative safeguards.” China encouraged the SCP to work on how to build capacity of patent offices in developing countries to improve examination capacity of those offices.

Image Credits: Flickr – Scott Maxwell