Harmonisation of Patent Laws

Swapna SundarCEO

IP DOME – IP Strategy Advisors

An Indian Perspective

Lab

MarketLaw

Operating at the Intersection of the Lab, the Law and the Market

Paris Convention

PCT

Patent Law Treaty

SPLTTRIPs

“The time for substantive harmonization is now. We are operating in a global economy, business innovation is happening across borders. The IP system needs to be supportive of this new reality.” APPC, 2011

Coincidently with the passing of the AIA the USPTO, under David Kappos, has been pursuing international engagement on the issue of harmonisation.

Heads of the United States Patent and Trademark Office, the European Patent Office, and the Japan Patent Office – collectively known as the Trilateral Offices – in 2011 celebrated 30 years of cooperation.

IP5 Offices agreed that the following ten Foundation Projects :

Common Hybrid Classification (lead: EPO)Common Documentation (lead: EPO)Common Application Format (lead: JPO)Common Access to Search and Examination Results (lead: JPO)Common Training Policy (lead: KIPO)Mutual Machine Translation (lead: KIPO)Common Examination Practice Rules and Quality Management (lead: SIPO)Common Statistical Parameter System for Examination (lead: SIPO)Common Search and Examination Support Tools (lead: USPTO)Common Approach to Sharing and Documenting Search Strategies (lead: USPTO)

The Tegernsee Group, 2011, is comprised of the Heads of the European, Danish, French, German, Japanese, UK and United States patent offices.

Key harmonization issues include grace period, 18-month publication, treatment of conflicting applications, first-to-file, and prior user rights.

The IP5, the European Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of China, and the USPTO, has agreed to form a Patent Harmonization Expert Panel (PHEP) to work on a comparative analysis study of the substantive laws which govern the five Offices’ practices with an eye on identifying potential areas in which harmonization may be achieved.

Global Best

Practices

Negotiated Trade-off

Major benefits of Harmonisation:

Reduction of workload of patent offices.

cuts legal fees, particularly for pharmaceutical inventions, whose applications are typically filed in several countries.

cuts down on “forum shopping” in multi-country litigation enforcement efforts.

creates certainty of patent rights. Businesses need to know what actions in different countries are going to be covered by a given patent.

creates value by bring certainty to the scope of a patent worldwide.

The Deputy Director of the US Patent and Trademark Office described the granting of compulsory license for Sorafenib Tosylate as the “most egregious” example of anti-TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) behaviour.

Article 27 of TRIPS generally mandates patentability where inventions are new, involve an inventive step (or are non-obvious), and are capable of industrial application (or are useful) giving countries freedom to approach interpretation of each of these three preconditions of patentability.

The World Bank estimates that Trips represent an annual $20 billion plus transfer of wealth from the technology importing countries to the technology exporting countries. (The U.S. got $36 billion in royalties in 1998 from patents and licenses, globally)

Developing countries need a period of calm and stability in which to devise intellectual property strategies consistent with both the TRIPS Agreement and the needs of their own emerging national and regional systems of innovation.

Shifting goal posts: a new round of multilateral intellectual property negotiations threatens to raise the technological ladder once again, before these countries even get a solid foothold on it.

Swapna SundarCEO

IP DOME – IP Strategy AdvisorsMobile: 9841282396swapna@ipdome.in

www.ipdome.in