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Published by IFIA
the International Federation of
Inventors' Associations

Published   March 13, 2003

"Patents without Borders" for "Patients without Borders"

by an EPO examiner
February 2003

The former French minister, Bernard Kouchner who has launched the non-governmental organization « Médecins sans Frontières » (Doctors without borders) proposes now the creation of « Malades sans Frontières » (Patients without borders). In view to facilitate its worldwide acceptance, he praises the supervision of the WHO and the UNO.
But who can pay for such international wealth insurance system?

The gap between rich and poor countries increases

As it is the case with the AIDS disease, the majority of patients are in poor countries whereas the drugs are patented and produced in rich countries to be sold at high prices. Thus the anti-AIDS treatment costs about 10000 $. The TRIPS agreement will provide in all signing countries 20 years of monopoly to the patent proprietor. As counter measure, the Doha agreement allows the developing countries to issue compulsory licenses.
Generic medicines are 10 to 20 times cheaper than patent protected drugs.
However the pharmaceutical companies argue that they need patent protection to finance the research of new components and the U.S. government makes pressure to limit the compulsory licenses to a small number of diseases.
The patent protection is practically inexistent in sub-Sahara countries, that's why the pharmaceutical industry does not file patents in these countries.
The research for tropical infectious diseases as for example malaria or tuberculosis is neglected because there are no returns since the products cannot be patented or if a patent is granted, the third-world country governments will issue compulsory licenses. Therefore the sanitary state of the third world countries is worsening.

To restore the balance between the rich and poor countries, all around the world, the idea of "patients without borders" is that WHO should implement a social insurance system to reimburse the cares and medicines in the poor countries.
In all developed countries such system is offered to every one and supports the medical industries to permit further developments.

It is obvious that the internal national economy of low-income countries cannot finance such a system. Therefore international sources must be founded and managed by the WHO.

Patents provide an obvious and recognised solution to the economic problem of the intellectual creators by providing economic returns from innovations, they acts as an incentive mechanism to enhance investment in knowledge production.
The Doha exception seems not to be a long-term solution and the best way for developing countries to build their health infrastructure in the future is to attract the investments in an open market, where the inventions are protected by law.
It is only a UNO supervised system, which would enable to distribute with more equity the world wealth and transfer parts of the benefits from the international trade into a world health funds.

The Patent system is overwhelmed and unsuited

The patent system is not any more suited to manage the world intellectual order and needs to be revised to follow the evolution of the world trade and to stay in line with the human rights.
Nowadays, multinational companies are profiting the most from the patent system and flood the patent offices with a huge amount of fuzzy and speculative patent applications.
Faced with this filings' avalanche, the patent offices must find solutions to master their workload and to follow the demand they imperceptibly decrease the quality. All patent offices compete against each other and must align themselves on the best bidding or the worst.

At the moment, the U.S. patent office (USPTO) grants after a broad examination practically any thing that's created by the human's hand even some discoveries of natural facts, which existed before the civilisation age, as the animal or human genes. Patents are also granted for business methods or computer programs.
Some Americans seem however to realise their foolish and hasty forward run and propose to improve the patent quality. The USPTO proposes for example to subcontract the search activity to private companies.

The U.S. are indeed the originators of the PCT reform within the WIPO to find solutions to reduce the granting costs and to master the examination workload. The U.S. favour the mutual recognition of the patents between the trilateral offices (USPTO, European Patent Office EPO, and Japanese Patent Office JPO). This could be seen as a first step towards a world patent system. This proposal is backed by Japan but not by Europe.

Applicants ask for a worldwide patent protection for about each second invention comprising at least the trilateral offices (Europe, U.S. and Japan).
Based on a first national filing (or sometimes more for japanese priorities), the applicant sends the same specification to each trilateral office. This text is published as like without search report 18 months after the priority date in similar terms by EPO and now also the USPTO. The search is at first carried out by the EPO about three years after.
Then the U.S. examination is done about 4 years later by broadly taking into account the citations of the European search report only for the novelty purposes and grants a US patent.
Generally after 5 years the European detailed examination of novelty and inventive step is started to successfully end by the grant of the EP patent.
The JPO search and examination starts 7 years later when all other patents have been granted.
However it is a non-written statement that the European patent scope is taken worldwide as reference for the protection, and the negotiations between the parties are based thereon.

The US and JP examiners can thus use the EPO work by browsing the electronic file at www.epoline.org to start their search and examination and overtake the european procedure.
That is a reason why these countries are in favour of a mutual recognition of the search or examination results.

As a matter of facts a japanese examiner can better understand the invention of his compatriots, under the line the EPO carries out the invention screening at first, even for inventions originated from these countries.
EPO carries out about 70% of the searches and preliminary examinations for the WIPO.
Each trilateral office has to get rid of its backlog and must urgently take measures to master the workload. Under these conditions it is clear that examination quality is pulled down.
Some clever applicants have well understood that leaving non-technicians to draft the patent specifications enables a broader protection to be received, without disclosing too much.
This situation is progressively worsening when pressurized examiners grant such claims with unduly large scopes. The speculative applicants become then more and more self-confident and the others must follow and adjust their filings to remain competitive.

Insidiously without anybody being aware of it, the system will end into a jungle of intellectual rights, as in the U.S. In such a situation, as is the case in a system without patents, the biggest enterprises will profit at most and will increase their superiority because the deficiencies of bad patents must be settled within jurisdictional litigations, which are very expensive, and which smaller companies cannot follow.

The benefits in protection for the applicants compensate widely the investments in taxes and in divulgation of know-how. That's why the filings are increasing.
The EPO cannot any longer fight alone to maintain the order in the intellectual propriety of the world and pay for others. The international community should maintain an efficient patent system, which is commonly accepted as favouring the innovation and the common human knowledge.

The solution "the patent without borders"

A patent valid without any borders' limit could help to solve the above problems.
A possible scenario to introduce such a world patent could progress as follow:

I. Pilot project of JP-EP synchronized search and examination

Together with our japanese colleagues of JPO we have started a synchronized search and examination of the patent applications in the field of the hybrid electrical vehicles.
The delay for the JPO examination request has been reduced from 7 to 3 years; driving thereby the examiners into a corner since they will have to do the pioneer work as we do.
We exchange regularly every trimester the list of the application we intend to search comprising the names of the examiners in JPO and in EPO in charge of the file and the status of the search and examination. Thus the counterpart examiners can contact each other by email to share the tasks. The japanese examiner will for example preferably search and examine the japanese filings and clarify some obscure point directly with the japanese inventor. The EPO examiner will as presently treat the applications originating from Europe or US. The searches can be carried out in parallel so that the nearest prior art can be commonly chosen and a draft for a first communication can be worked out.
This system has been set up by the examiners themselves following a trilateral exchange program and does not necessitate any change in law nor in Europe nor in Japan and the EPO management is even not aware of this project. This procedure should reduce the workload in each patent office, by sharing equitably the tasks to use at best the individual skills to obtain a synergic effect and avoiding thereby an unnecessary duplication of the work. The documents to be looked at during search should be reduced and at the same time the quality should be increased by the simultaneous examination from different points of view and by a more direct exchange with applicants. For the time being the Americans do not participate in this project.

II. Trilateral Synchronized Search and Examination

It would be conceivable that in 2 or 3 years with the participation of the Americans, to create a fictive international application file when a triple application for the trilateral offices is detected. This single common file could be only in the electronic form in English and accessible to the public as the European file inspection under Epoline.org and would be completed gradually by the examiners of the different offices who enter their search results, and the written opinions or interview reports, by the third parties who could file same interventions and by the applicants who would enter the answers and the requests.
The intermediate search results are published by EPO as the actual search report to comply with the EPC requirements.

One or three examiners of the receiving office, near the inventor's country could invite the applicant for an interview or oral proceedings. If the examiners of the three offices agree on a request they could countersign a grant proposal. This request should then be filed by the applicant in similar terms as a new request in each trilateral office and could merely be processed by formality officers to end without further examination as a national or regional US, JP or EP patent.

In case of non-unanimity or non-approval of a final request of the applicant, the national or European individual granting proceedings would follow their own way as today.
Hence as for the PCT route no appeal is possible and at this stage the set up of trilateral appeal courts is not necessary. This proposal would neither necessitate any modification of any law. This procedure should be very attractive for the applicants since the costs would be reduced by about two thirds. In order to limit the filing rush and maintain a high quality standard, compensations should be found and introduced.

A first obvious one could be the increase of filing and examination fees to ensure a constant cost level for the applicants.

Downstream of the trilateral proceedings the national US, JP or EP patents would be maintained at that stage as today.
Since the costs are less and since the proceeding does not allow appeals the applicant would be more careful and avoid the "cat and mouse play" with examiners to fight for each word in a claim as we experience this too often in the European procedure.
In case of a non-conclusive trilateral procedure, the application would be split into individual national applications, which would then be examined as actually but with additional national fees and higher costs.

A patent granted in a limited number of countries while rejected in others would forcibly be considered of less value and more suspicious than a patent granted through the trilateral route.
A strong invention is easier to delimit against the prior art.

III. Collective PCT Search and preliminary examination

In case of PCT international applications a similar procedure can be envisaged by advantageously replacing the job done at a single ISA and IPER office, generally EPO, by a network examination wherein already at this PCT Chapter I and II stages three ISA or IPER offices chosen by the applicant will cooperate for a common search and examination.
The following regional procedure should be a formal check in case a preliminary positive opinion has been commonly output by the three examiners of the three different offices.

The major part of the investments have already been done by EPO in the frame of Epoline, which should be offered by EPO to WIPO, who should control the procedure which would in fact replace advantageously the actual PCT chapter I and II because the opinions are mutually checked and commonly approved although the work is tripled.

When the application is published as WO-A2 document 18 month after priority, an electronic file is opened on an Internet site as Wipoline.org comprising a public part and eventually a confidential part where examiners can exchange their first intermediate search results and their inter-office-memos. Third parties should also have the possibility to send interventions recorded in the public part of the electronic file, which is not possible at the moment.
Once the collective search finished, the search results with possibly a first opinion on the merits of the invention can be published as WO-A3 document. Then the preliminary examination can start, with preliminary opinions and representative answers or new requests filed online. Once all three examiners consider that the object of the invention as defined by the claims is new and inventive, they issue a countersigned preliminary report.
In case of a positive result the national or regional procedure to follow should be a pure formality as it is the case actually when the office has emitted itself the IPER.
In case of a negative report the examination is prosecuted in the regional phase as nowadays.
The overall expanses for the three offices should not be much higher than today's EPO costs for a chapter I and II, since the tasks are shared between the examiners and done online. Hence, for the tasks sharing, the receiving office should carry out 50% and the two others about 25%; the fees should be divided in the same ratio.

A majority of applicants have already adopted the PCT route and the filing percentages are continuously increasing to represent about 60% of EP applications.
If a unique preliminary examination is recognized by several patent offices and is furthermore cheaper for the applicants, most applicants would certainly adopt it.

Also the different kinds of applicants from the multinational companies to the private inventors and the small and medium enterprises (SME) should find benefits in such system.
To regulate the PCT filings and hence maintain the standard quality of the collective examination a proportional increase of fees should be taken into account.

French or German enterprises have already tried some filings in English to get rid of the translation costs. The industry has also proposed to use only the English language for the community patent. For the SME the reduction in fees should be foreseen as compensation.
As in the aeronautic communications the sole use of English facilitates the exchanges and this would also simplify the work inside EPO.

IV. Last step "The Patent without Borders"

Normally, after having practiced this trilateral or international method for 2 or 3 years, the patent offices or the governments should become aware that the national formal granting phases are absurd and superfluous and should come to the conclusion that a trilateral or world patent (WP) of WIPO based on the proposal for grant countersigned by three examiners is equivalent and furthermore suppresses unnecessary costs for the offices.

Thus, each government should issue a law for recognising the WP patent as conferring the same rights as a national patent.

However, in case of rejection of a WP application, this would be split into a number of national or EP applications, since these national procedures should be maintained in parallel to the WIPO procedure for example for the first filings or the inventions intended merely for regional markets. But the weight and the asset of a WP patent should obviously be higher than individual small national patents.

One could imagine that the WP patent once granted is split into a bunch of national patents, as this is actually the case for the European patent. This would however be equivalent and without improvement as regards the previous step. On the other hand to get rid of the present patent jungle with its mosaic of different protection rights from one country to the other and provide some clarity to enable the public to keep an overlook on the situation of the production possibilities, it is preferable to keep the WP patent integral.

The rectification procedure through the national or EP route in case of rejection should be provisional because it avoids setting up an appeal court at the stage.
Nevertheless in order to restore the balance of the returns in favour of the public and third parties it would be equitable to propose also an opposition procedure limited to 9 month as it is foreseen in EPC or preferably a centralised invalidation procedure during all the WP patent life should be made available to anybody.

It is not acceptable that a national court of justice of any country will have the right to revoke or modify a patent granted by an international authority. That's why the opposition or annulment procedures should be implemented in the same way as the granting process with an international opposition division comprising for example three or more technically qualified examiners and one legally qualified examiner chosen in different patent offices comprising eventually one or two examiners having participated at the granting phase.

At that later stage, an independent international appeal court should be implemented for dealing with the appeals against the decisions of the international opposition divisions of WIPO. This court may also judge the actions in infringement against a WP patent anywhere in the world as a second instance court. Any national court receiving an action into annulment as reply to an infringement should transfer the annulment case to WIPO and wait on its decision before deciding on infringement.

Concerning the patent filing fees

Actually the overall costs for a worldwide protection represents about 50 000 Euros whereof
5 000 Euros are fees, 30 000 Euros for the attorneys and about 15 000 Euros for the translations.
Once the world patent system has entered into force, the fees for the attorneys will be reduced down to 5000 Euros and the translation fees to 0 Euro. The reduction of the filing fees should not profit to the applicants, because this would lead to a further filings inflation and would deflate the quality of the patents.

In the contrary to maintain the high quality standards and also to invest the money to finance the world social security funds, the price of a WP patent of such highest value should also be more expensive than today.
Thus the fees for a "patent without borders" should amount approximately to 52 000 $, whereof 2000 $ as fees should cover the expenses of the WIPO and ensure thereby its functioning.

The surplus of 50 000 $ would be transferred to the WHO to finance the Organization of "Patients without Borders".
Taking an estimate of 180 000 patent filings per year, this would provide an annual income for the funds of "Patients without Borders" of about 9 000 000 000 $ (9 billions $).

This insurance system should permit anybody in the world to be cured with the medical techniques at the newest state of the art and pay for all medicines even those still under patent protection. The pharmaceutical companies would then perhaps invest in the search for treatments against tropical diseases as malaria or tuberculosis.

Surely the social insurance is expensive and even in developed countries the system is in deficit, but it is unacceptable that patients are not cured for financial interests, unfortunately this occurs every day even in rich countries as the USA. If drugs for curing tropical diseases will be reimbursed, perhaps the pharmaceutical industry will revise its position and decide to invest in such a huge potential market.

Thus facing this dilemma, either leaving the actual patent system deteriorate to the advantage of some privileged share holders and leaving the poor people in the south die from SIDA or other infectious diseases, or choosing a world patent system, no politician from any country would dare to vote against a "patent without borders" financing "patients without borders".

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