Co-chairperson of Patents Committee REPORT of PATENTS COMMITTEE 54th Council Meeting, Nov. 20, 2007 Adelaide Convention Center, Adelaide, Autstailia Patrick Yangoh Kim Co-chairperson of Patents Committee

Agenda 1 2 3 4 5 6 Opening Remarks of Co-Chairs Self Introduction of Committee Members 2 Reports of Recognized Groups 3 Australian Group Comments 4 Report on PCT Reform 5 Report on FICPI/AIPLA Colliquium 6 2

Agenda Report on Progress in Group B+ Meeting 7 Keynote Speech - Inventive Step 8 Report on Inventive Step in Taiwan 3 9 Disc. on Inventive Step in Asian Countries 4 10 Discussions and Adoption of Resolution 11 Closing Remarks of Co-Chairs 12 3

Australian Group Comments 1 Legislative Changes: requirement to provide search results has been abolished High Court Decision on Inventive Step: common general knowledge can be different for different claims in the same patent Patent Regulations Change: official fees have been increased including excess claim fees 2 3 4

Report on PCT Reform Supplemental International Search 1 Suppl. International Search system has been adopted. May be requested within 19 mos. of priority date. International Publication Language 2 Korean and Portuguese adopted as Int. Pub. Language. Thus, the number of Int. Pub. Languages is 10. 5

Report on FICPI/AIPLA Colloquium Background 1 Backlog of examinations  lower quality of search  lower quality patents Major Topics 2 Problems created by applicants/attorneys Examination problems encountered by applicants What is quality patent? Managing growth while enhancing quality Role of smaller offices 6

Report on Progress in Group B+ Meeting Group B+ group of developed countries formed in 2005 aiming to make single text of SPLT draft for North-South negotiation in WIPO Plenary Meeting in Sep. 26, 2007 (Geneva) agreed to proceed for further consensus with nine (9) “thumbs-up items” including first-to-file system, grace period, prior user right, etc. 7

Keynote Speech – Inventive Step History of patent system including addition of inventive step/nonobviousness requirement to the patent law was reviewed Examination practices of JPO, EPO and USPTO concerning inventive step were reviewed and compared Relationship between inventive step and the topical issues of patent quality, cooperation among Patent Offices and substantive patent law harmonization was also reviewed 8

Report on Inventive Step in Taiwan Examination of inventive step in Taiwan was introduced Unexpected effects of invention is important in Taiwan in recognizing inventive step 9

Discussions – Inventive Step Questions concerning determination of inventive were given to the members in advance of the Committee meeting 10

Discussions – Inventive Step Q1: What are the elements or conditions for determining an inventive step or obviousness in your country? Q2: How is the way of creating an invention (e.g. "flash of creative genius") evaluated regarding an assertion of an inventive step or obviousness in your country? Q3: How is the effect or function of an invention evaluated regarding an assertion of an inventive step or obviousness in your country? Q4: How is the commercial success evaluated regarding an assertion of an inventive step or obviousness in your country? Q5: Is there any measure under your patent practice that can be taken to prevent hindsight from being applied? 11

Discussions – Inventive Step In India, technical advancement and economic significance are important factors for determining inventive step of invention In New Zealand, the relationship between secondary evidence and invention should be clearly explained 12

Discussions – Inventive Step In Korea, motivation is an important factor. The factor has broader meaning and other factors such as ordinary creativity and advantageous effects should be considered 13

Discussion and Adoption of Resolution Differences in practice of determining inventive-step among countries should be carefully taken into account for reasonable patent law harmonization discussions Method or manner for determining inventive-step should not be strictly stipulated within a treaty 14

Patents Committee of APAA Thank You ! Patents Committee of APAA