EU Community Patent, EU Community Patent, Substantive Patent Substantive Patent Harmonization and Harmonization and
PCT RevisionPCT Revision
D.C. Patent Lawyers Club D.C. Patent Lawyers Club March 10, 2002March 10, 2002
Albert [email protected]
Counsel, Burns Doane Swecker & Mathis LLP
Alexandria, VA
Co-Director, Intellectual Property Program
George Mason University School of Law, Arlington VA
Former Director of Industrial Property Law
World Intellectual Property Organization (WIPO)
International Computer International Computer Legislation?Legislation?
You cannot obtain one that is made abroad Even if it has identical specifications and meets
identical requirements The cost is determined (no competition) Ownership is taxed yearly It stops working on a date certain, whether or
not you are done with it Sanctioned under WTO Agreement!
At the conclusion of this At the conclusion of this program, please deposit program, please deposit
your illegal Japanese laptop your illegal Japanese laptop computers in the box by the computers in the box by the
door.door.
International International Patent Patent LegislationLegislation
You cannot obtain one that is made abroad Even if it has identical specifications and meets
identical requirements The cost is determined (no competition) Ownership is taxed yearly It stops working on a date certain, whether or
not you are done with it Sanctioned under WTO Agreement!
Free Trade in IP Goods & Free Trade in IP Goods & Services?Services?
Uniformity of regulation - Harmonization
Economies of scale - mutual recognitionNon-discrimination - same rights no
matter where obtained
Intellectual = Personal or Real?Intellectual = Personal or Real?
Real Property – Governed exclusively by national law– Unique to the territory, not movable
Personal Property (goods)– Subject to international law– Not unique to the territory, movable
Intellectual Property Protection– Governed exclusively by national law– Not unique to the territory? Movable?
A Question of A Question of National Sovereignty?National Sovereignty?
Internationalization of IP Law
1880’s - Paris and Berne Conventions
Globalization of IP Law
1990’s – WTO and TRIPS Agreements
A Patent Diversion:A Patent Diversion:
The New EU The New EU Community PatentCommunity Patent
24902490thth Council Meeting Council Meeting MinutesMinutes
Framework adopted for Community Patent:– File in national office or EPO; examine by EPO– Jurisdictional (Court) System– Languages and Costs– Role of National Patent Offices– Distribution of Fees
Review 5 years after first patent granted
CourtsCourts
Community Patent Court to be established– As of 2010– Under Court of Justice– In Luxembourg– First instance and appeals
In meantime, each country designates a court
LanguagesLanguages
Up to grant, English, French or German, as in EPO (claims in all three)
Upon grant, translate all claims into all official languages of EU (now 11; could be up to 19, but countries can decline translation)
?? Also, enlarged abstract, or first three pages of application ??
Cost of the Community Cost of the Community PatentPatent
About €25,000 ($27,000) for up to 25 states
About half the cost through the EPO in 8 states
Other ResourcesOther Resources
There is an EU Press Release at http://www.eu2003.gr/en/articles/2003/3/3/2129/
The minutes of the Council Meeting, containing the outline of the decision on the Community Patent, are attached
International Patent International Patent HarmonizationHarmonization
Began in 1984 (grace period discussions)Committees of ExpertsFailed Diplomatic Conference in 1991U.S. withdrawal from discussionsProcedural Harmonization:
– Committees of Experts and “SCP”
Patent Law Treaty in 2000Revival of substantive discussions (SPLT)
2002 Patent Law Treaty2002 Patent Law Treaty
Harmonizes and simplifies formal requirements for national and regional applications and patents– especially filing date requirements– incorporates PCT “form or contents” requirements– express provision for electronic filing– standardized Forms-single application for national
and international filings– safeguards against unintentional loss of rights– does not cover substantive patent law– a CP can be more liberal, except for filing date
2002 Patent Law Treaty2002 Patent Law Treaty
3 ratifications at this stage; 10 are needed for entry into force
USPTO has circulated accession and implementation package to other agencies for clearance
Developments Outside SCPDevelopments Outside SCP
PCT Modifications – 30 months for Chapter II– PCT Revision Process
WIPO ‘Patent Agenda’WIPO management changes
Developments Outside SCPDevelopments Outside SCP
European Patent Convention Revision– Diplomatic Conference, Dec. 2000– ‘Second basket’
European Community Biotech DirectiveCommunity Patent – language issue
The Ultimate GoalThe Ultimate Goal
Mutual recognition of search and examination results among selected offices
Reduction of duplication of workReduction of costs?Increased uniformity of rights worldwideMore practical alternative to a “World
Patent”
SPLT: agreement in SPLT: agreement in principleprinciple
on a number of provisionson a number of provisions Scope of the SPLT:
– exclusion of infringement issues, except for the provisions on interpretation of claims, which would apply in infringement cases
– covers national and regional applications, international applications when they have entered the national phase
Right to the patent Application
– abstract should merely serve the purpose of information
SPLT
SPLT: agreement in SPLT: agreement in principleprinciple
on a number of provisionson a number of provisions
Deep harmonization???
SPLT
SPLT: agreement in SPLT: agreement in principleprinciple
on a number of provisionson a number of provisions Amendment and correction of applications
– majority: no inclusion of abstract for disclosure– possibility of correction of granted patents?
Definition of prior art: everything made available before the filing or priority date– position of the USA:
no opposition in principle inclusion of secret prior use (loss of rights)
– earlier applications: international applications under the PCT application to novelty only SPLT
SPLT: agreement in SPLT: agreement in principleprinciple
on a number of provisionson a number of provisions
Sufficiency of disclosure– discussion on “undue experimentation”– deposit of biological material
Claims– “support” versus “written description” requirement
Definition of novelty Definition of inventive step/non-obviousness
SPLT
SPLT
SPLT: Some debated issuesSPLT: Some debated issues
Patentable subject matter and technical character
Article 12(1) and (5) USA wish broad provision European countries wish to include only inventions
which have a technical character What should be the general rule and what the
exception? TRIPS Article 27.2 and 3 exceptions Deep harmonization?
SPLT: Some debated issuesSPLT: Some debated issues
Exceptions and grounds for refusal/invalidation
Proposals by Brazil and the Dominican Republic on Articles 2 and 13/14
Support by a number of developing countries, opposition by some industrialized countries
Topics addressed: public health, access to genetic resources, traditional knowledge, folklore
Opposition of the USASPLT
SPLT: Some debated issuesSPLT: Some debated issues
Equivalents and declarations made during prosecution (file wrapper estoppel)
Principle of equivalents agreed in principle Discussion on which methodology to apply and at which point in time to take into account equivalents Some discussion on file wrapper estoppel
SPLT
SPLT: Some debated issuesSPLT: Some debated issues
Industrial applicability/utility
Industrial applicability versus utility WIPO had, in 2001, questioned the need for a
distinct requirement. This was not accepted by the SCP
Possible compromise text or no deep harmonization?
Not a “make or break” issue
SPLT
SPLT: Some debated issuesSPLT: Some debated issues
Grace period
Was a major blockage to the conclusion of the 1991 Treaty
In SCP, 3 rounds of discussion so far:– general information by countries– delinkage from other issues– discussion of more detailed issues (scope of a grace
period, duration, third parties rights, etc.) No clear opposition against grace period
SPLT
SPLT: Some debated issuesSPLT: Some debated issues
Additional requirements relating to description
“technical” citation of prior art (“mandatory” versus
“preferable”) presentation of invention as a solution to a
problem “best mode” requirement
SPLT
SPLT: Working GroupSPLT: Working Group
Established by SCP/6 on a proposal by the USA First session held during SCP/7 (May 2002) Topics under discussion:
– unity of invention– link of claims– number of claims– requirement of “clear and concise” claims– procedures to treat complex applications
Second session to be held in November 2002
SPLT
PCT ReformPCT Reform
Done deal: 30 month time limit for Chapter 1– 11 reservations left
Future: Enhanced search report to be published with application
Automatic designation of all countries, but files not sent to designated office until requested
PLT-like forgiveness for missing time limits For more information, see
http://www.uspto.gov/web/patents/biochempharm/documents/pctreform.pps
Harmonization and the Harmonization and the USPTO Strategic PlanUSPTO Strategic Plan
To avoid “Patent Office Meltdown”– Long pendency– Poor quality (‘rationalized’ work = no work)
Work sharing – search, and examination?Deferred examinationPost-grant opposition, etc.
Is it time to think outside the Is it time to think outside the box?box?
Outside the 1836 boxAnd the 1991 boxMaybe all of the boxes …
Patent Cost IssuesPatent Cost Issues
The cost of a mid-size car?More for Less?Patent Office Meltdown?Languages, Languages, LanguagesCost of litigation – not addressed by
harmonization
Negotiation VenuesNegotiation Venues
GlobalInternational RegionalTrilateralBilateralUnilateral
Forward on All Fronts?Forward on All Fronts?
Thank you.
