UK Industry Group Details Goals For Global Patent Harmonisation

In recent months, intellectual property rights holder groups and northern governments have been stepping up their focus on harmonising international patent law to ease procedures and lower costs. Today, a potent industry group in the United Kingdom articulated some of those aims.

The policy paper (PP05/15) issued on 22 April by the IP Federation covers core issues such as first to file, prior art/novelty, grace period, co-pending applications, and mandatory 18-month publication for unclassified applications.

“It would be highly desirable to reach agreement, at the least, on the prior art to be considered in relation to novelty, on the principle that the patent on a given invention should be awarded to the first inventor to file and on a grace period,” the group said.

“The members of the IP Federation trust that agreement may be made on the above topics, in a move towards international harmonisation of substantive patent law,” they said.

On first to file, the companies said patents should be given to the first inventor to file or the successor in title of that inventor. This would include the inventor’s employer as per any contract.

On prior art, they said “absolute novelty should be a basic requirement when assessing patentability, subject to limited exceptions for a prior disclosure by the inventor at an international exhibition or within a grace period, or for breach of confidence.”

So any information made available to the public before the priority date of the patent application is prior art unless covered by the limited exceptions, they said.

Secret commercial use should be excluded, they said, asserting, “If there is no enabling disclosure there is no prior art.”

The paper noted a divergence among the trade association’s members on when Patent Cooperation Treaty applications should become citable prior art.

On grace period, the group said it favours introducing a grace period “during which the disclosure of an invention by the inventor will not invalidate a subsequent patent application for the invention, provided that certain conditions are met.”

The conditions are spelled out in the paper, such as that: grace should only be given to the inventor’s own earlier disclosure; that the grace period should be 12 months before the priority date of a patent application; that a declaration of a claim to grace period should be made at the time of filing a patent application; and the onus must be on the inventor/applicant.

Grace period conditions also include that prior user rights are mandatory, though the paper said the group’s members hold diverging views on whether prior user rights should be local or global. And the group said a graced disclosure should not establish an right to prevent the use or development of products or processes by others.

The issue of global patent harmonisation has long been a topic of negotiation at the World Intellectual Property Organization.

The IP Federation represents “IP-intensive” companies in the UK. “Not only do our companies own considerable numbers of IP rights, both in Europe and elsewhere,” they said, “but they are affected by the activities and IP rights of competitors.”

The list of over 40 member companies includes some of the world’s largest pharmaceutical, high-tech, biotechnology, energy, and retail corporations.