Efforts toward Harmonization of International Patent System July 19, 2013 The Graduate School of Commerce, Waseda University Visiting Professor, Tatsuhiko Sato, Ph. D. Patent Attorney 1
Globalization of the industrial structure and the influence that it gives to patent system The time has come when anyone could make the same thing anywhere. The user of the patent system [system user] hopes that invention is protected in the same way anywhere, accompanying the globalization of the industrial structure. The system user expects that a patent is promptly granted as the stable and strong right without disparity. However, The principle of the patent independence in the Paris Convention (Article 4bis) admits each country to protect invention independently of each other. As a result, protection of the invention differs in each country. Because it is necessary for the system user to file application in each country, the expenses and burdens to handle the procedure increase. The system user wishes that patent system is unified globally. 2
Movement of patent system harmonization Discussion at WIPO in 1985. Conflict among advanced countries. The United States declared first-to-invent. Aimed harmonization in the procedure side in 1990. Concludes PLT. Discussion at WIPO in 2000. The harmonization of the patent system stagnated by the confrontation of the discussion between the rising nation and the advanced country. Discussion by advanced country meeting concerning harmonization of patent system in 2005 (B + meeting). Advanced countries agreed to draft texts along the compromise proposal package. Understanding to a certain extent obtained for item such as first to file and Grace periods. However, the United States conflicted with Europe. The United States wanted to proceed to a discussion by the content that had been agreed once. Europe wanted to include disclosure of all patent applications after 18 months from application, and the right of prior uses, to the discussion. Discussion among 5 director generals from JPO-USPTO-EPO + China and South Korea Patent Offices meeting in 2011. The discussion concerning the harmonization of the patent system began. The United States in 2012 adopted first to file by the patent law revision. 3
Movement of patent system harmonization Aiming at strengthening the protection of intellectual property by the economic partnership agreement(epa) in two countries or among multiple countries. Countries concluding EPA with Japan Singapore, Mexico, Malaysia, Chile, Thailand, Indonesia, Brunei, Philippines, ASEAN, and Swiss (Reached basic agreement) India, Peru (Under negotiation) Gulf Cooperation Council (GCC), Australia, South Korea. With China ASEAN, Chile, Hong Kong, Macau, Pakistan, Peru, New Zealand, Thailand, Singapore, and Taiwan With South Korea ASEAN, Chile, EFTA, India, Singapore, the United States, and EU With United States Israel, NAFTA, Jordan, Chile, Singapore, Bahrain, Morocco, Oman, Peru, and South Korea Considerations are given to TPP of Asian countries including the United States (Pacific rim economic agreement), FTA scheme among Japan, China and South Korea, and the like. 4
Movement of patent system harmonization PPH: Patent Prosecution Highway The quality and the speed of the examination have improved by the work-sharing of the examination of PPH. TIPO ( 台湾 ) E APO PPO ( ユーラシア ) ( ポーランド ) USP TO ( アメリカ ) KIPO ( 韓国 ) UKIPO ( イギリス ) 201 3 年 3 月 1 日時点 DPM A ( ドイツ ) INPI ( ポルトガル ) IP OPHL ( フィリピン ) D KPTO ( デンマーク ) NB PR ( フィンランド ) IL PO ( イスラエル ) IPO ( アイスランド ) JPO ( 日本 ) ROS PATEN T ( ロシア ) APO ( オーストリア ) NIPO ( ノルウェー ) IP OS ( シンガポール ) SIPO ( 中国 ) NPI ( 北欧 ) IM PI ( メキシコ ) EPO PRV SPTO ( ヨーロッパ ) ( スウェーデン ) ( スペイン ) HIP O ( ハンガリー ) CIP O ( カナダ ) : 通常型 PPH : PPH MOTTAINAI 採用 : PC T-PPH 5
The vision of Global Dossier Global Dossier is a future vision intended to integrate Dossier (document related to the application) information etc. on each PTO virtually, and to construct a common system that provides unified service. each PTO service JPO's proposal Service for the general public WIPO service One-Portal Dossier JPO DB EPO DB USPTO DB SIPO DB KIPO DB X PTO Y PTO WIPO DB Global Dossier 6
Promotion of international examiner conference The effort to the harmonization of the examination practice is advancing. 7
Movement of patent system to harmony Harmony of patent system Substantial law meeting of director generals from Big Five Patent Office Harmony of patent system by FTA/EPA Procedural law An increase in PCT application Ratification of PLT agreement Operation Examination requirement Examination procedure Examination information Review of examination requirement International examiner conference Construction of examination system for globalization Promotion of PPH achievement of strong and steady right without disparity Promotion of Global Dossier concept Development of foreign patent document search engine Formulation of common patent classification 8
Possibility of harmonization of examination standard The examination standard differs in each country. Therefore, the applicant is requested to correspond to different application processing in each country. 1. Description requirement of the specification and claim 2. inventive step 3. Amendment requirement for the specification and claim 4. Description requirement of the claim and claim fee schedule etc. The applicant s load is enlarged by the necessity to correspond to different examination standard in each country. 9
Possibility of harmonization of examination standard It is said to be difficult to harmonize the standard of the examination of each country, because the examination standard of each country is based on a different patent system and procedure. However, there is a report showing that the consideration on inventive step by examiners of JPO,USPTO,EPO on a same case resulted in roughly identical conclusion. If so, wouldn t there be a possibility that the standard of the examination can be harmonized? 10
Attempt to harmonize the description requirements of the specification The description requirement of the specification differs in each country. Therefore, the applicant must prepare the specification and claim depending on the requirement in each country. The description requirement is a matter of style, to what extent must an invention be disclosed and how claims should be drafted. It is easy to adjust the description requirement of the specification and claim, unlike other requirements for the examination of the application, because the conflict of interest in each country is small. 11
Comparisons on support requirements of Japan, the United States and Europe (1) Intellectual Property High Court Grand Panel Judgment (2005 (gyoke) 10042) Generalization: Claimed invention must be in the range that the person skilled in the art can recognize that the problem can be solved based on disclosure and technical common sense. Substantiation: In order for parameter invention to conform with support requirements, it is necessary that 1 The detailed explanation of the invention is disclosed, to the extent that a technical meaning of the relationship between the range indicated by numerical formula and the effect obtained thereby, must be understood by the person skilled in the art without disclosure of specific examples, Or, 2 Specific examples is disclosed, to the extent that the person skilled in the art may recognize that the range indicated by numerical formula should obtain the desired effect. 12
Comparisons on support requirements of Japan, the United States and Europe (2) Case study by trilateral patent offices (2008) 1 Opinion of the United States: This case meets "written description requirements" that person skilled in the art can recognize that the applicant made (possess) the invention concerned. In the case where person skilled in the art can make the invention without an excessive experiment and can use the invention, it is not necessary to describe how and why the invention works. 2 Opinion of Europe: In this case, at least one method to carry out invention is described, and the parameter is measurable without special labor. Two embodiments satisfy conditions identified by parameter and the comparison example exists. As such, no further disclosure is necessary. Whether or not the technical problem is solved in the whole range of the invention, is a question of inventive step. 13
Efforts toward harmonization of claim description requirement and claim fee schedule Each country has different requirements for claim description. Each country has different claim fee schedules. Therefore, claims should be drafted differently for each country. Even when a patent is obtained in one country, patented claim must be drafted differently for filing in other countries. As such, PPH cannot be used. Differences in claim description requirements and claim fee schedules increases the overall cost for global patent acquisition. 14
JPO s survey & research on claim description requirements and claim fee schedules (1) JPO s view Cost reduction in global patent acquisition cannot be realized without harmonization of claim description requirements and claim fee schedules Purposes of research Survey on claim description requirements that user feels the need for harmonization. Study of the best claim fee schedule for users. 15
JPO s survey research on claim description requirements and claim fee schedules (2) Research method Study by committee composed of experts from academia / industry and patent attorneys Wide-scale survey among domestic users Hearing survey among industries and patent attorneys overseas Survey result A report to be completed on Feb. 2014 and to be published thereafter on JPO s website. 16
Proposal Harmonization of international patent system is a desire of system users. Heretofore, effort for harmonization of international patent system was performed at the initiative of patent offices around the world. System users (applicants/agents) must strive for harmonization of international patent system. To achieve this goal, users must aggressively perform activities of discussing and proposing across the border. 17