Office of Policy and External Affairs: Patent Law Harmonization
Standing Committee on Patents and the Trilateral “Reduced Package”
The World Intellectual Property Organization (WIPO) has been considering substantive patent law harmonization for over twenty years. Discussions began in 1983 when the WIPO Director General (DG) proposed a study on the legal effects of an international grace period on patent law. Work on the study gradually evolved, through the efforts of the Committee of Experts, into a draft substantive harmonization treaty text, known as the “Basic Proposal.” That text was the focus of the ultimately unsuccessful 1991 Diplomatic Conference on the Conclusion of a Treaty Supplementing the Paris Convention as far as Patents are Concerned.
In the aftermath of the failed 1991 Diplomatic Conference, many provisions of the Basic Proposal, including, inter alia, those relating to patent term, rights conferred by a patent, and non-discrimination as to field of technology, were incorporated into the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement) adopted in the Uruguay Round of trade negotiations that created the World Trade Organization (WTO). However, many issues were left unresolved and substantive patent law harmonization was set aside as a topic of discussion. During the period of 1995-2000, discussions instead focused on the generally less controversial matters of the form and content of patent applications, resulting in the Patent Law Treaty of 2000, which sets forth agreed maximum formal requirements that Contracting Parties may impose upon patent applicants.
In November 2000, however, work on substantive patent law harmonization began anew in the WIPO Standing Committee on the Law of Patents (SCP) with a view to concluding a Substantive Patent Law Treaty (SPLT). The goal of the SPLT is the harmonization of issues relating to the grant of patents. Substantive patent law harmonization will facilitate the objectives of enhancing patent quality and producing beneficial results for the users of the patent system world-wide.
In addition to the ongoing discussions at WIPO, the Trilateral Offices (the U.S. Patent and Trademark Office, the European Patent Office and the Japan Patent Office) established a Trilateral Harmonization Working Group in 2004 with the objective of advancing the discussions on substantive harmonization. As a result of these efforts, the Trilateral Offices agreed that it would be advantageous to all patents stakeholders to reduce the scope of the SPLT to a more manageable “reduced package” of provisions, with subsequent “packages” to be taken up in due course. Although several variations of the “reduced package” were suggested, the Trilateral Offices agreed on a “reduced package” of prior art related provisions—definition of prior art, grace period, novelty and non-obviousness/inventive step—as the most appropriate way forward.
In the view of the Trilateral Offices, the prior art related provisions would provide the best opportunity for near-term agreement and meaningful results. Harmonization on these issues would result in consistent examination standards throughout the world, improved patent quality, and a reduction in the duplication of work performed by patent offices. Moreover, an internationally recognized definition of prior art should also help to address concerns regarding protection of traditional knowledge, as discussed by the WIPO Intergovernmental Committee on Traditional Knowledge, Genetic Resources and Folklore (IGC).
WIPO Group B Activities
Following agreement at the November 2004 Trilateral Conference to open up the Trilateral harmonization discussions to other, like-minded parties, in December 2004, the USPTO invited the member states of the European Patent Convention, the European Commission, the European Patent Office, Japan, Australia and Canada to an “Exploratory” Meeting Concerning the Future of Substantive Patent Law Harmonization to be hosted by the USPTO in February 2005. The purpose of the meeting was to discuss the current state of harmonization and ways for moving the process forward.
The meeting resulted in a “Statement of Intent” concerning the ways in which the industrialized nations represented in WIPO (the WIPO Group B members) would coordinate in the future. As part of this consultative process, the group established two working groups—one devoted to substantive patent law harmonization issues, particularly the “reduced package” items, and a second to discuss issues related to intellectual property and development. As with the Trilateral Working Group, this work is intended to advance the ongoing discussions on the SPLT.