History and Meaning of Patent Harmonization

2004.10.25

Takaaki Kimura

Vice-chair person of Patents Committee

APAA Japan Group

  1. What is “PATENT HARMONIZATION” ?

・PATENT HARMONIZATION is a movement of world-wide standardization of patent systems.

・Movements of world-wide standardization have been worked not only on patents, but also on trademarks, designs and other intellectual property protections.

・Background of PATENT HARMONIZATION:

Patent system differs to one country to another. Under the territoriality principle, it is necessary to reduce the workload to file in foreign countries and the duplication of the work by Patent Offices.

  1. History of PATENT HARMONIZATION

(1)Paris Convention (1883)

Article 2 National Treatment

Article 4 Priority Right

(2)PCT (1978)

A treaty standardizing the formalities

International Search

International Preliminary Examination

(3)Old Patent Harmonization Treaty (1984-1990)

・Official Name: “TREATY SUPPLMENTING THE PARIS CONVENTION

AS FAR AS PATENTS ARE CONCERNED”

・11 meetings were held at WIPO.

The first Diplomatic Conference for adopting the Treaty was held in June, 1991, and the second Diplomatic Conference was planned to be held in 1993. However, due to the U.S. domestic situation, the discussion was stopped with no further diplomatic conference hold. The discussion between the United States (against introducing the first-to-file system) and the European countries (against introducing grace period) ended with no agreement.

・The final draft of agreement (so-called “Basic Proposal”) contains not only prosecution matters in the examination of the Patent Offices but enforcement matters.

Ex. Article 12 Grace Period;

Article 17 Changes in Patents;

Article 21 Extent of Protection and Interpretation of Claims; and

Article 23 Enforcement of Rights.

(4)PLT (1995-2000)

①Background

・Under the situation where the discussion of the above mentioned Old Patent Harmonization Treaty failed, the first meeting was held in December 1995 at WIPO based on the proposal of the bureau, and the Treaty gained approval at the Diplomatic Conference in June 2000.

・The Treaty has an important role as a preliminary step toward SPLT.

②Basic Principle

・“User friendly”

(decreasing the workload by the applicant to obtain protection in foreign countries)

・“Cost reduction” (reducing costs for obtaining rights)

③Contents

The harmonization treaty related only to the formality matters under national laws.

Ex. Article 5 Requirements on Approval of Filing Date

Article 6 Requirements on Approval of Application

Article 7 Power of Representative and Requiring of

Representative by Contracting Party

Article 11 Allowance of Extension of Time Limits for Procedure

Article 12 Reinstatement of Rights

Article 13 Correction or Addition of Priority Claim,

Restoration of Priority Right

(5)SPLT (2000-Present)

①Background

PCT: Harmonization of procedure at the international phase when

obtaining patent rights in foreign countries

PLT: Harmonization of laws related to formality matters between

foreign countries for obtaining patent rights in foreign countries

The above harmonization is not related to the substantive matters (Ex. requirements for obtaining patents) in the countries wherein patent rights are to be obtained, therefore, effective protection of applicants can not be achieved.

It is necessary to harmonize the substantive matters.

As the result, it is also able to reduce the duplication of the work by Patent Offices by harmonizing the substantive matters.

②Contents

6 meetings were held at WIPO.

16 Articles consisting current draft have been discussed.

  1. Direction of Discussion on SPLT

①Significance of “Reduced Package”

(proposed by Trilateral Offices in the 10th meeting on SPLT at WIPO)

・Based on the recognition of difficulty in harmonizing the substantive matters since the old harmonization treaties, the treaty focused on more realistic and step-by-step patent harmonization.

Possibility for establishment of SPLT1, SPLT2 ・・・・

・The exercise of patent rights and infringement issues are fell outside the scope the SPLT.

・Discussion based on “feasible package” of the articles

・Address user’s interest as much as possible

②Contents

Only “prior art-related issues” are to be discussed as first package

・Definition of Prior Art

・Grace Period

・Novelty

・Non-obviousness/Inventive Step

③View

This direction of direction of SPLT is realistic and constructive, and, both applicants and Patent Offices can receive the benefit from SPLT, regardless of the state of a country, developed or developing. Therefore, it is extremely rational, and we, the Patent Committee, will support this direction in the harmonization of patent law. End of the Document

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