In a circular dated December 14, 2001,
the Director General of the World Intellectual Property Organization (WIPO) invited
interested governments, organizations and users to submit comments on his document
(A/36/14) entitled "Agenda for the Development of the International Patent
System", hereafter called "WIPO Patent Agenda". Later WIPO established a
special Website at http://patentagenda.wipo.int
with the objective to promote discussion of the issues (31 Questions) as widely as
possible, and convened a Conference on the International Patent System (Geneva, March 25
to 27, 2002).
This special IFIA Webpage is limited to the idea of a possible World Patent, which appears
in Question No 2, under the heading "General policy and structure of the
international patent system." The Question, drafted in very
"prudent" terms, reads as follows:Subject to
progress on the substantive harmonization of patent laws, should there be an adoption of
procedures where substantive rights could be granted under an international recognized
procedure?
The answers refer some times directly, but more often
indirectly, to the idea of a World Patent. We only quote the positive answers.
IFIA
written comments
Other written comments
Extracts of lectures at the Conference
WIPO Document
IFIA
Written Comments
Towards a World Patent
IFIA participated actively in the recent PCT reform process, which was initiated by the
USA. Whenever possible, IFIA supported ideas and proposals which could lead, one day, in
the long run, to a kind of world patent. The exact name of such an international patent
system is not important. Meanwhile, IFIA has adopted the expression "world
patent", a friendly-user term for inventors.
IFIA is of the opinion that the WIPO Agenda should include a clear reference to a world
patent, which should be the ultimate goal of any international patent system. Such a
long-term objective is in no way in opposition to short term and medium term objectives.
IFIA has already launched an Internet Discussion Forum on the subject, since July 10,
2001. See special IFIA webpage www.invention-ifia.ch/WorldPatent.htm
This forum starts with a lecture on the idea of a World Patent given by IFIA President,
Dr. Farag Moussa, in Helsinki, on May 18, 2001 (text available on Internet in English,
with presently translations into French, Russian, Spanish, Serbo-Croat and Macedonian). It
is followed by a list of references to printed or online magazines from different
countries, which have reproduced this text. These include the official Quarterly Gazette
of the Industrial Property Protection Office of Macedonia.
The next two sections of this IFIA webpage concern the reactions of inventor associations
and individual inventors, as well as those of other circles, to IFIA President's lecture
on the idea of a World Patent. All in all, these comments reflect wide support to this
idea. On February 15, 2002, IFIA webpage had already published 32 testimonies (15 pages A4
size) from 25 countries listed hereafter in their alphabetical order: Argentina, Bosnia,
Cameroon, Canada, Cyprus, Finland, Germany, Georgia, Hungary, Libya, Macedonia,
Netherlands, Niger, Nigeria, Norway, Philippines, Romania, Spain, Sudan, Sweden,
Switzerland, Trinidad and Tobago, Togo, Uruguay, USA.
Extracts
from other written comments
(Highlighted by IFIA)
- Patent Offices (P.O)
Australia P.O.
Ultimately, yes Differences in legal systems and precedent across the various
juridictions may make complete harmonization difficult, particularly in the area of
enforcement. But similarities are generally greater than differences and so this should
not prevent some form of global patent grant being considered.
Such a grant would have to be sensitive to different needs, including different stages
of development of countries and different types of applicants. Alternatively, the grant of
a patent in an office could be the basis for a grant in all designated offices, with
designated offices having a time-limited option to perform extra search or examination to
address local issues.
Bulgaria P.O.
Patent law harmonization should result in the grant of rights by an internationally
recognized procedure, first through development of the existing PCT procedures.
Czech Republic P.O.
Creation of such internationally recognized procedure would facilitate and simplify the
procedure for the applicants.
Denmark P.O.
Yes, we should work towards a system, where substantive rights can be granted under
an internationally recognized procedure.
Hungary P.O.
In the long run, subject to progress on substantive harmonization of patent laws,
the possibility of adopting procedures where substantive rights could be granted under an
internationally recognized procedure will have to be examined. This system should
contribute to increasing legal security.
Japan
Remarks by IFIA:
1. The government comments of Japan were submitted to WIPO by the Permanent Mission of
Japan to the UN in Geneva (and not by the Patent Office as such).
2. Comments from Japan start by answering to the following clear title : "Towards
Realization of World Patent" and concludes its analysis by referring to a very
modern concept, namely that of a "virtual world patent system" :
"… not the centralized office collecting the present offices' facilities but the
virtual office based on a networked linkage of the present offices'
facilities."
3. The main reference to the world patent appears under a sub-section entitled
"Expansion of the PCT system" which reads as follows: "(…) the
practical approach to realize the international patent granting procedures toward the world
patent system should proceed separately into two cases: PCT route and Paris [Convention]
route. Therefore it is considered that this cannot be implemented sufficiently just by
improvement and expansion of the PCT system."
United Kingdom P.O.
In the long term, patents in many countries should be granted either directly
through an international system such as the PCT, or else with as little further
national examination as possible following an examination to internationally recognized
standards. However, we acknowledge that significant further harmonisation will be
necessary before any international instrument to this effect could usefully be adopted.
United States P.O.
A long-term objective of patent law harmonization must necessarily include the grant of
rights under an internationally recognized procedure. However, the proliferation of
bureaucracies to achieve such an objective should be avoided.
B. Non Governmental Organizations
American Intellectual Property Law Association (AIPLA)
Yes. The ultimate goal should be an internationally recognized procedure that could
be carried out by any one of a plurality of examining authorities that would be given
effect in all countries party to an agreement establishing such procedures.
International Association for the Protection of Industrial
Property
(AIPPI)
The Patent system should provide for a multiple choice of national, regional and
international patent systems.
Greek Group of AIPPI
Subject to progress on substantive harmonization of patent laws, there should be an
adoption of procedure, where substantive rights could be granted under an internationally
recognized procedure, so that the requirements and standards applied by the various
Patent Offices in various countries be the same.
Oxfam (GB)
WIPO should promote wider debate among governments and public interest groups about
the implications of global patent harmonisation especially as it relates to the
development of centralized patent applications and grant procedures before moving ahead
with this agenda. Such discussion is vital given the current inherent imbalances in the
international patent system whereby the majority of patents in developed and developing
countries are granted to companies in rich countries, and the negative impact this
imbalance has on weak developing economies.
Trade Marks Patents and designs Federation (TMPDF)
Provided that international harmonisation of both law and practice is achieved and that
PCT international search and examination are sufficiently improved, states could
recognise international grant under an augmented PCT on an optional basis.
Union of Industrial and Employers' Confederations of Europe (UNICE)
In the revised structure of the international patent system, no national phase examination
should be carried out anymore if the PCT search and examination are based on
internationally agreed upon patentability standards laid down in the SPLT, and carried out
by an organisation that is trusted by the various designated states. An independent
quality control mechanism should be ensured. Moreover, after a positive PCT
examination, the "international patent" thus obtained should be administrated by
WIPO, just as in the Madrid system for trademarks and in the Hague system for industrial
designs.
Extracts from
lectures at the WIPO Conference
USA (P.O.)
 James E. ROGAN
Director, U.S. Patent and Trademark Office (PTO)
March 26, 2002
The idea of an international patent system based on mutual recognition of a
single patent granted from a single application is not new. In the United
States, for example, the 1966 findings of the President's Commission on the
Patent System stated, "the ultimate goal in the protection of inventions should
be the establishment of a universal patent, respected throughout the world, issued in the
light of, and inventive over, all of the prior art of the world, and obtained quickly and
inexpensively on a single application, but only in return for a genuine contribution to
the progress of the useful arts."
The application and maintenance costs of a patent are particularly burdensome for
individual inventors and small businesses around the world, often precluding them from
obtaining rights beyond the borders of their own countries. The duplication of effort
involved in grating patents can be particularly harmful to developing and least developed
countries where scientists and engineers can have more effect on economic growth working
in their areas of expertise, not examining patent applications.
Just as Rome was not built in a day, we take heart that the process of constructing an
international patent system, while slow, has been steady. The importance of this issue
is such that it cannot be ignored. I fully intend, during my tenure as Under Secretary, to
make this issue a priority and assume a leadership role in its promotion and ultimate
resolution.
We believe additional reform would go a long way toward reshaping the PCT as a vehicle
for global patenting.
WIPO
Document
Section IX of WIPO Document (No. A/37/6 of August 19, 2002) submitted to the Assemblies of the Member
States of WIPO (September 23 to October 1, 2002) is reproduced hereafter
IX. THE LONG-TERM FUTURE: IS A GLOBAL TITLE AN APPROPRIATE
GOAL?
What is a Global Title?
187. A global title could take many forms, each bringing its own advantages and
difficulties. At its most basic, this could be simply a system granting a bundle of
national patents which from that point are independent and administered by national
authorities in exactly the same way as conventional patents. Alternatively, further
administrative matters might be included, similar to the Hague and Madrid systems for
designs and marks, so that a central register was maintained showing the status in
different countries.
188. The term could also embrace more ambitious systems, where a unitary "world
patent" was granted and considered centrally for enforcement and validity across all
the participating States. This could only be approached if the States had a great deal of
political will from the outset since it would involve significantly greater difficulties
of sovereignty and jurisdiction than a basic system of grant.
The Prospects
189. It is clear that few people see even a basic system of international grant as a
realistic goal in the short term. Many States are proponents of this in principle, but
they see it only as a long term goal, requiring a complete harmonization of laws on
patentability in the participating States. Even if close harmonization were achieved, a
number of States feel that there are significant issues of sovereignty at stake such that
they would not wish to join a system in the foreseeable future where international
examination was any more than a recommendation as to patentability. It was also pointed
out that entry into such a system should be a matter of choice according to the particular
needs of each individual Member State. Consequently, a system along the lines of the
current one should remain available for as long as any State demands it.
190. Nevertheless, it is clear that at least a common system of grant is a heartfelt wish
of most users of the patent system, though most stress that this would have to be a robust
system backed by full harmonization of laws on patentability (as interpreted by national
courts) and consistently high quality of search and examination. For individuals and small
companies especially, enforcement of rights even within their own country is difficult and
often impossible. Internationally, they find that it is out of the question.
191. In principle, neither a limited deviation from total harmonization, nor matters of
sovereignty, would have to provide an insuperable obstacle. Harmonization would need to be
deeper than at present, but it is not essential that it be absolutely complete. As long as
the options available were sufficient to allow States to include the requirements most
appropriate to their particular policy needs, yet simple enough that an examiner could
divide cases into clear categories without confusion, it would be possible to envisage a
system where a patent was granted in two different forms for different categories of
States, or else granted for some States but refused for others. Clearly this system would
not be as simple to use or administer as one where the requirements were absolutely
uniform, but might still be easier than pursuing separate applications in each State.
192. Furthermore the matter of sovereignty could be addressed using provisions similar to
those which exist in the Madrid and Hague systems for marks and designs. The system might
include provisions allowing Contracting States the opportunity to refuse the application
within a limited time after the application had been "provisionally" granted by
an international authority. It should also be remembered that in this basic form any
patent could also be revoked in actions before a national patent office or court. More
difficult than this would be the setting up and recognition of bodies competent to handle
appeals from the decisions of the International Authority examining the application.
193. Any system of centralized grant would also need to consider what other elements
should be included at an international level. Administrative matters, such as maintenance
of a register, may be desirable, creating a system similar to the Madrid and Hague
systems.
194. The needs of third parties should also be considered as well as those of applicants.
It has been suggested that the convenience for applicants which would be afforded by the
creation of any centralized process for grant of patents ought to be mirrored by providing
a system of centralized opposition or invalidity challenges. Of these, an opposition
system within a limited period would be seen to impact less on sovereignty, since it would
be part of the process leading to grant. Either possibility would raise a large number of
practical issues which would need to be considered in great detail if such a proposal were
to be further considered.
Systems for Adopting Change
195. The PCT system at the moment provides a system for creating international search and
examination reports, but these are non-binding opinions, which States are not required to
act by granting a patent. In principle, the Treaty could be fundamentally amended so that
the end result was binding on the Contracting States (subject to review, such as
appropriate appeal mechanisms, opposition systems and invalidity actions). However few, if
any, Contracting States would currently be in a position to ratify such a system and some
feel it unlikely that they ever would be. Consequently attempting to "force"
change in this way would be likely either to leave the system in an unworkable
"2-track" state for a very long time or to have the result that the changes
might never come into force at all.
196. Consequently, it seems likely that changes to the existing system will need to be
ones which make the process of making an application easier and more effective, but leave
in place the fundamental proposal that the end result is normally merely a non-binding
opinion, but leaving open the option for individual Contracting States to decide to take
the system further with respect to themselves. This may allow Contracting States to ratify
changes to the Treaty without concern that it fundamentally changed the obligations which
they were undertaking.
197. A "global title" could then be built up to the extent to which different
participating States were comfortable using optional protocols. A first protocol might
cover the creation of a system of international grant covering the participating
countries. This might include the appointment of bodies to act as an appeal tribunal
against unfavorable international preliminary examination reports, and preferably to take
opposition proceedings, so that those concerned by the grant of rights should benefit from
a similar centralization of results. It might also include provisions allowing Contracting
States to require national processing of applications in certain situations, such as where
it was felt that national law deviated in a significant way from the PCT standard.
198. Another protocol might allow for the common administration of such patents, forming a
common register (though the entries for each State would be determined by the courts of
each State). If a great deal of confidence were achieved among enough States, yet another
protocol might then be envisaged providing for centralized tribunals dealing with matters
of enforcement and invalidity. It is clear however that this is a long way off.
199. Any amendments made to the PCT system should not preclude a global title as an option
if sufficient Contracting States wish it, allowing for further developments for those
States who want to go further, for example by way of optional protocols. The desire for,
practicality and extent of a global title should be reviewed when the SCP has reached
conclusions on the degree to which harmonization of substantive patent law can be
achieved.
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