1 Standing Committee on the Law of Patents (SCP) A United States Perspective Stephen G. Kunin Deputy Commissioner for Patent Examination Policy United States Patent and Trademark Office

2 Goal Global substantive patent harmonization –Drafting and filing of a single application with consistent results around the world –“Mutual recognition”

3 Overview Initiated –Early 1990’s –Stalled due to controversial issues New approach –Determination of “best practice” –“Deep harmonization” of law and practice

4 Major Issues First-to-invent vs. first-to-file Restriction/unity of invention Prior art Grace period Disclosure requirements

5 Major Issues (cont.) Patent eligible subject matter Utility/industrial applicability Grounds for refusal/invalidation/revocation Current/future status

6 First-to-Invent vs. First-to-File Not currently under discussion in the SCP Public opinion in US continually gauged March 19, 2001 Federal Register notice revealed continued deep division (Fed Reg. Vol. 66, No. 53)

7 Restriction/Unity of Invention Article 6 Working group on Multiple Invention Disclosures and Complex Applications –“Unity of invention” may be outdated –Differences in practices as to claiming

8 Prior Art Article 8 US supports inclusion of “loss of rights” provision, majority opposed Effect of earlier filed applications –US supports use for novelty and non-obviousness –Remaining delegations support use for novelty purposes only

9 Grace Period Article 9 Modern trend is to include in first-to-file systems –Provided for in current treaty draft –Need for provision concerning intervening rights is under discussion

10 Disclosure Requirements Enablement –Article 10 –Includes concept of “undue experimentation” Factors for determination are in Regulations (Rule 10) Regulations closely follow In re Wands factors –Majority strongly favors requirement for biological deposit as of filing date

11 Disclosure Requirements (cont.) Written Description –Article 11(3) –Rule 11bis “The subject matter of each claim shall be supported by the [claims,] description and the drawings in a manner…showing that the applicant does not claim subject matter which he had not recognized on the filing date.”

12 Patent Eligible Subject Matter Article 12 Majority urges restriction of eligible subject matter to that having a “technical character” US prefers broad patent protection for any new and useful invention US cannot accept inclusion of a “technical” or “industrial” requirement

13 Exceptions to Patentability Majority supports inclusion of TRIPs Article 27.2 and 27.3 Proposed exceptions to patentability for issues concerning public health, the environment, protection of genetic resources, traditional knowledge, and “social development”

14 Exceptions to Patentability (cont.) US position on proposed exceptions –They are contrary to the concept of “deep harmonization” –They call into questions the very purpose of the discussions

15 Industrial Applicability/Utility Article 12(4) – “A claimed invention shall be industrially applicable (useful) if it… –[can be made or used for exploitation in any field of commercial activity] –[can be made or used in any kind of industry] –[has a specific, substantial and credible utility].” See ICOS decision of EPO Opposition Division

16 Utility US preference is for a broad view of patentability, as provided by the US utility requirement Industrial Applicability (I/A) may require technical character or effect I/A could potentially be used to prevent patenting of inventions that are private in nature I/A could stifle development of new areas of innovation

17 Refusal/Invalidation/ Revocation Articles 13 and 14 Proposal that the proposed exceptions to patentability be included as grounds for refusal/invalidation/revocation

18 Current/Future Status Progress very slow Short-term prospects bleak Eighth session tentatively scheduled for November 18-22, 2002

19 Thank You