Recent Discussions relating to the International Patent System

Tomoko MiyamotoHead, Patent Law Section

Patent DivisionWIPO

2nd WIPO Seminar on IP and Creative SMEs in the Digital Environment, May 18, 2009

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Looking into the future of the international patent system

Patent system should effectively serve the public interest (both right holders and society)

Fundamental features• Credible

– Timely grant and improved quality/validity of patents• Functional

– Rational use of resources– Improved access to patent system, including access to

patent information (costs)• Acceptable

– Accommodate different economic and social conditions and interests, without foreclosing further development

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Global IP Environment

International Patent System

Economic Political

Legal Technological

International patent system affected by changes in various aspects surrounding the system

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Recognition of the patent system in the broader policy arena

• Patent policy has been recognized as integral part of national trade, economic development, public health, science and research policies– New technology and new economic reality may provoke

new policy debates

• biotechnology and ethics– Transition to knowledge-based, global economy

• Consequently:– Increasing number of international fora– Enlarged participation in policy discussions– Coordination necessary both nationally and internationally

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Global IP Environment

International Patent System

Economic Political

Legal Technological

Increasing demandIncreasing tension

International cooperation

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Treaties in the field of patents administered by WIPO

http://www.wipo.int/treaties/en/ Member

States

• Paris Convention for the Protection of Industrial Property (1883)

173

• Patent Cooperation Treaty (1970) 141

• Strasbourg Agreement Concerning the International Patent Classification (IPC) (1971)

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• Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977)

72

• Patent Law Treaty (2000) 19

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Patent Law Treaty (PLT)

• Entered into force on April 28, 2005• 19 Contracting States• Streamlines and simplifies formal requirements for

national and regional patent applications and patents (ex. filing date requirement)– In general, a maximum set of requirements that Offices

may apply– Model International Forms

• Request form, Change in name or address, Change in applicant or owner, power of attorney etc.

– Avoidance of unintentional loss of rights• Extension of time limit/Continued processing • Restoration of rights

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Further international cooperation (1)

• Formality requirements largely harmonized by:– the PCT (international applications)– the PLT (national applications)

• Rapid growth of patent applications filed in foreign countries (Globalization vs. Territoriality)– applicants: expanding demand; costs; legal uncertainty– patent offices: duplication of work; resources

• Better platform for international cooperation• Ensure validity of patents (quality)

Bringing together core operational concepts relevant for patent examination (definition of prior art, grace period, novelty, inventive step)

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Further international cooperation (2)

• Post-TRIPS Agreement– TRIPS Agreement: Comprehensive coverage,

including enforcement, with substantive provisions– Concerns about public policy implications

Economic development and public policy flexibility;Preventing abuse/misuse of patents– ensure existing public policy flexibility – Exceptions from patentable subject matter and

limitations to the rights, transfer of technology, anti-competitive practices, sufficiency of disclosure, disclosure of origin of genetic resources/TK

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Standing Committee on the Law of Patents (SCP)

• Member States’ committee (IGOs and NGOs: observers)• Working towards the establishment of the work program

• “Report on the International Patent System”– Economic rationale of the patent system and its role in

innovation and technology dissemination– Legal and organizational aspects – Issues particularly relevant to broader policy considerations

and development concerns

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SCP [http://www.wipo.int/meetings/en/topic.jsp?group_id=61]

• Preliminary studies– Exceptions from patentable subject matter and

limitations to the rights– Dissemination of patent information– Patents and standards– Client-(patent) attorney privilege

– Transfer of technology (to be prepared)– Opposition systems (to be prepared)

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Patents and Standards

Common objectives = encourage innovation diffusion of technology

Potential tensions• Patent hold-up (implementation of standards blocked by

essential patent holders) • Transaction cost (accumulated royalty cost)

Measures applied/suggested• Patent policies of standard-setting organizations (SSOs)

patent disclosure and licensing commitment• Patent pools• Competition law• Compulsory license

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Client–(patent) attorney privilege

Confidentiality of communication between a lawyer and his client (not to be revealed in court or to a third party)

free and frank communication between a lawyer and his client– Common law tradition (discovery privilege)– Civil law tradition (no discovery professional secrecy obligation)

Communication between an IP advisor and his client privileged?• Lack of uniform laws causes clients to lose confidentiality in advice from

IP advisors at the international level

• Privilege applicable to IP advisors?– Non-lawyer IP advisors? Registered/unregistered advisors? In-house

advisors?– Foreign IP advisors?

• International recognition through– Reciprocity? Unilateral recognition of foreign privilege? National

treatment? Minimum standards for national laws?

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Thank you

tomoko.miyamoto@wipo.int