the International Federation of
February 14, 2002
Last update March 19, 2002
WORLD PATENT: WHAT WAS SAID BEFORE MAY 2001
|My lecture on the idea of a World
Patent (Helsinki, May 18, 2001) is certainly not the first one on the subject. Articles
had already been written by experts and discussions had taken place in different
interested circles. In this IFIA Internet page, I shall recall (i) a 1993 high level
Symposium of the Trilateral Cooperation(EPO, USA and Japan), (ii) some recent initiatives
and discussions which took place in the framework of the World Intellectual Property
Organization (WIPO), and (iii) some views expressed by a number of experts.
||Dr. Farag Moussa, President of IFIA
Geneva, February 12, 2002
USA - Japan - EPO
|October 26, 1993, Munich
||Tenth Anniversary of Trilateral Cooperation : Symposium
|April 15-17, 1998, Beijing
the International Patent System in the 21th Century
|May 4-5, 2001, Geneva
|Since September 2000
||PCT Reform process
|Gerald F. Mossinghoff
Former Commissioner of Patents and Trademarks (USA)
Former Commissioner, Patent Office (Japan)
Tenth Anniversary of
Trilateral Cooperation : Symposium
Munich, October 26, 1993
We reproduce hereafter some of
the interventions made at this Symposium by high level representatives. These relate to
the first question which was discussed, namely "a vision of an
enhanced value of a globalised patent." (highlighted by us)
|Mr Bruce A. LEHMAN
Commissioner, US Patent and Trademark Office
) in terms of vision I think I
can say unequivocally that my vision is that we would have a
global patent at some point and which one in fact could go to one
of the Offices or perhaps a universal patent Office. (
) And you
would get a patent that would cover the world. But that's a long way off. In getting
there, of course, then we talk about a single search (
(highlighted by us.)
Mr Lehman continues by saying that "it is very hard to conduct a (single) search
without having a harmonized legal system which is the basis for the search." He then
adds that until the "larger legal harmonisation problems" are resolved, a
"single search is unlikely to take place."
|Mr Wataru ASOU
Commisioner, Japanese Patent Office
if) the harmonisation in search
methods (develops) then it could lead to universal granting of a patent,
which might in turn, lead to the creation of a world patent office."
(highlighted by us.)
|Mr Gert LÜCK,
ABB, Chairman of Patent Management Team. (Switzerland)
) industry will not wait.
Industry is developing very quikly. The market is already global today, and so I also
think the patent system could and should develop a little bit more quikly. And, if I may
make also a remark with regard to the ideas to have a Trilateral search team and to have a
world patent office, I am also a little hesitant to believe in this,
because in industry today, people think more about decentralised structures. And, I think
a world patent office somewhere in the world, maybe in Geneva or somewhere else, would not
function at all. You should have decentralised institutes working together and recognising
each other." (highlighted by us.)
Symposium on the International Patent
System in the 21th Century
Beijing, April 15-17, 1998
Dr. Arpad Bogsch, Director General of WIPO, referred to the world patent in his
introductory remarks to the lectures of the Symposium, while Mr. François Curchod, Deputy
Director General, gave a talk on a possible PCT Patent.
Dr. Arpad Bogsch (extracts)
The tasks for the coming century will be to
perfect the present systems further. Naturally, the simplest solution would be the grant,
by one office, of patents valid in all countries. I do not think that this is within the
bounds of possibility, but one can and indeed will come close to that situation in one or
more of the following ways : first, by increasing the number of countries belonging to the
same regional systems; second, by increasing the number of regional systems; third , by
recognizing the validity of a patent in a given country even if granted by an office other
than that of the country or of the regional system to which the country belongs; fourth,
the same as the third, but subject to each country's right, for specific reasons, to
refuse such validity as far as it is concerned.
Naturally, there is an underlying condition that will determine the progress of
internationalization. That condition is the unification of data bases and of search and
examination methods as long as there is more than one patent-granting office, that is,
until and unless there is a world patent. (highlighted by us.)
Dr. Bogsch concluded by stating:
The proposed improvements are naturally in the interest of users of the patent system.
Without such improvements, the use of the patent system will be so complex and expensive
that, as indicated at the beginning of these remarks, the system will become unusable in
But solutions do exist. All that is needed is the political will to depart from
the present routine and innovate (highlighted by us.).
And innovation, after all, is a notion that must be acceptable to a system dealing with
Mr. François Curchod presented, on
behalf of WIPO Secretariat, a lecture entitled A proposed Protocol on
"PCT Patent". In this lecture, Mr Cruchod presented the main
characteristics of this new "possible initiative", as another step towards a
"world patent" (highlighted by us.)):
||While a world patent, in the sense of a
truly global patent granted by one authority with an automatic and binding effect in
participating countries and regional Offices, remains an ultimate goal, we do not feel
that it is realistic to expect to achieve that goal yet. But the time is ripe for an
intermediate and more modestly ambitious step which, if successful, will pave the way to
the achievement of that ultimate goal. The strategy behind this new initiative of the
International Bureau (Secretariat of WIPO) is to establish a "win-win" situation
in which all interested parties would gain without any of them losing anything.
The essence of the proposal is to extend the operation of the PCT system further into the
national phase so as to allow applicants to obtain from the International Bureau, on the
basis of the results of the international preliminary examination, a title of protection
having the effect of a national or regional patent. Such a title of protection is
hereinafter referred to as a "PCT patent." Some of the key features of the new
"PCT patent system" which we envisage (as distinct from the present PCT filing
system) would be as follows:
(a) Participation in the new system would be optional for both applicants and Contracting
States (in much the same way as Chapter II of the PCT is optional now).
(b) A PCT patent would have effect only in those States which decide to participate in the
new system and which the applicant elects for the purpose of the international preliminary
examination and additionally indicates for the purpose of the PCT patent procedure
(c) The grant of a PCT patent would require international preliminary examination to have
taken place; therefore, only Contracting States bound by Chapter II of the PCT would be
eligible to participate in the new system.
(d) Only applicants from States participating in the PCT patent system would have the
option of making use of it.
(e) Any Contracting State which participates in the PCT patent system could do so on the
basis that it would only be bound by a PCT patent if the international preliminary
examination report had been prepared by the IPEA, or by one of the IPEAs, specified for
the purpose by that Contracting State.
(f) The effect of a PCT patent in any "indicated State" would be the same as a
national or regional patent granted by or for that State, subject to certain clearly
defined possibilities for the Office concerned to refuse the effect of the PCT patent at
an early stage.
These points and other questions were thereafter addressed in
|Industrial Advisory Commission (IAC)
This newly created independent advisory body in WIPO referred to the idea of a world or
global patent in its discussions at its Second session (September 13, 1999) and Third
session (May 4 and 5, 2000).
The Report of the second session includes under "Future Work" the following:
||The Patent System in the
Twenty-First Century. Several members of the Commission emphasized the importance
of studying means of reducing the cost of obtaining and maintaining patent protection, as
well as the need to consider the possiblity of introducing a global patent
(highlighted by us.)
|At its third session the IAC adopted
a resolution urging WIPO member states to explore ways to lower costs of obtaining and
maintaining intellectual property rights in multiple countries. To note the following
passages of that resolution.
||URGES the members States of WIPO to adopt a
work program for the development of a more comprehensive approach to the reduction of the
costs of obtaining and maintaining intellectual property protection in multiple countries,
ii) Futher exploratory work on the possible introduction of a PCT certificate of
patentability and work, in the long term, on the development of the legal framework for a world
patent (highlighted by us.)
Mr Gerald F. Mossinghoff
Former Commissioner of the US Patent and Trademark Office
At the Yale Symposium on Law and Technology (Spring 1999), the former Commissioner of
the US PTO gave a lecture on the "World Patent System Circa 20XX, A.D". Section
IV of this lecture is entitled "Essential Characteristics of a World Patent
System". These are in brief:
|In the next Section of his lecture,
Mr Mossinghoff listed the additional issues that need to be addressed and resolved before
an effective global patent system can be established, and experts working together will be
able to solve every one of these.
Mr Hisamitsu ARAIFormer Commissioner of the Japanese Patent Office (1996 - 1998)
In a book published by WIPO in December 1999 (Intellectual Property Policies for the
Century - The Japanese Experience in Wealth Creation), Mr Arai, then Vice-Minister
for International Affairs (MITI), wrote the following in his chapter 6 (A Global Patent
Scenario - pages 59 to 62) :
||Business is becoming increasingly global. (
). Thus it is only right
that patent protection should also be global.
The JPO, USPTO, and EPO have been meeting annually since 1983 (
). At the meeting
held in The Hague in 1996, Japan proposed that they also study the idea of a
global patent (highlighted by us.), in line with the multinationalization of
business, and this idea was well received by both the United States and Europe.. (
This will be basically a four-stage effort.
The first stage is to get
agreement on the sharing and mutual recognition of prior art search results. (
The second stage is to recognize each other's patents. A patent that has been granted in
Japan, for example, should be recognized in the United States, and vice-versa. In a way,
this is very similar to the way automobiles or electrical appliances that meet one
country's standards are accepted for use in the other country as well. (
The third stage is to implement trilateral patents between the U.S., Europe, and Japan.
And the fourth stage is to extend this worldwide, to provide a truly global patent system.
This is the basic road map on the way to global patents. There are, of course, many
problems that have to be overcome. (
) Yet science and technology know no national
borders. The time is right for global patents that will be respected worldwide.
Achieving a global patent system will require an approach quite different from the
traditional treaty negotiations. The WIPO has 171 member states, and it would be very
unwieldy to try to negotiate a new treaty with all of them.
Thus, a de-facto approach has been suggested whereby the three core patent offices first
create a de-facto global patent. The creation of a global patent does not have to mean the
creation of a World Patent Office in Geneva with tens of thousands of examiners and other
employees. There is no reason why the work cannot be de-centralized and handled locally.
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