1 PATENT HARMONIZATION UPDATE Samson Helfgott Director of Patents KMZ Rosenman New York, N.Y. January,

2 Substantive Patent Law Treaty (SPLT) First attempts to a Substantive Law Treaty failed mainly due to inability to compromise Patent Law Treaty (PLT) on Procedural matters -- adopted in 2000, not yet ratified, but “accepted” as international standard Renewed Activities on SPLT Last meeting of standing Committee on Law of Patents held in Geneva revealed numerous conflicts –North-South Issue of Genetic Resources and Traditional Folklore –East-West Issues of Different Patent Systems in US/EP/JP Next Meeting of Standing Committee on Law of Patents Geneva, May 10-14, 2004

3 Trilateral Activities Last meeting held in Japan in Nov Prior to meeting each Patent Office prepared a proposal of a Framework for Harmonization The Memorandum of Understanding at the conclusion of the Trilateral Meeting Prioritized Harmonization issues into a first and second package First package to produce agreement by May 2004 Priority to be given to items relating to: Prior Art Grace Period Novelty Inventive step/non-obviousness

4 Trilateral First Package Prior art** Hilmer Doctrine Anti-self-collision Prior art effect of PCT Applications in the International phase Prior art effect of Earlier applications for Inventive step Grace period*** Novelty** Inventive step/Non-obviousness** Sufficiency of disclosure* Restriction/Unity of Invention Amendments/Correction *Under this item, the working group will discuss at least the items regarding best mode, deposit practice, enablement and support requirement, and any further items that the working group may decide to discuss. **Discussion on double patenting will be included. ***Since it is accepted that the item of grace period and first-to-file/first-to-invent are linked, grace period, although included for discussion in the “first package”, is subject to movement on first-to-invent. ****Under this issue, the working group will discuss claim interpretation during the course of patent granting process, but not during litigation. Claim Drafting****

5 Trilateral Second Package First-to-file/First-to-invent Patentable subject-matter/technical character Utility/Industrial Applicability

6 Round Table of NGO’s Held in London on Nov , 2003 Sponsored by AIPLA & CIPA Attended by 24 NGOs (Non-Governmental Organizations) and a delegation from WIPO A consensus felt that we should proceed on a “mini-basket” of issues: 1)First-to-Invent/First-to-File 2)International Grace Period 3)Prior Art 4)Applicability of Pending Applications as Prior Art

7 List of NGO Participants CIPA-Chartered Institute of Patent Agents FICPI - La Fédération Internationale des Conseils en Propriété Industrielle IPO -Intellectual Property Owners Association Patentanwaltskammer(DE) AIPLA -American Intellectual Property Law Association IPIC -Intellectual Property Institute of Canada JIPA -Japan Intellectual Property Association CNCPI -Compagnie Nationale des Conseils en Propriété Industrielle IIPS -International Intellectual Property Society IPLA -Intellectual Property Lawyers Association IPTA -Institute of Patent and Trade Mark Attorneys of Australia BDI -Federation of German Industry JPAA -Japan Patent Attorneys Association CNIPA -Committee of National Institutes of Patent Agents epi -Institute of Professional Representatives before the European Patent Office UNICE -Union of Industrial and Employers’ Confederations of Europe TMPDF -Trademarks, Patents & Designs Federation ABA/IPL -American Bar Association Section of Intellectual Property Law ICC -International Chamber of Commerce APAA -Asian Patent Attorneys Association ABPI -Brazilian Association of Intellectual Property FICPI -La Fédération Internationale des Conseils en Propriété Industrielle IPO -Intellectual Property Owners Association OCPI -Ordine dei Consulenti in Proprieta Industriale

8 Consensus Views of NGO’s First-to-Invent/First-to File (First Inventor to File) –In principle, first-to-file preferable –Aware of political difficulties in U.S. –No US NGO (APIPLA, ABA, IPO, IIPS) at the meeting disagree on first inventor to file International Grace Period –General support –Length of grace period still an issue –Preconditional declarations still an issue Prior Art –No geographic limitations should be imposed on where the prior art could originate –Meaning of “available to the public” still an issue either: as long as can be accessed or must it be reasonably and effectively accessible without extreme efforts Pending Applications as Prior Art –Prior Art date begins at global priority date, not its filing date in the country –Still in issue are PCT applications, either global priority date or date of entry into national stage in that country –Secret Prior Art either for novelty defeating alone or also for inventive step –Whether to require terminal disclaimers for obvious double patenting –Self collision issues

9 AIPLA Position First-to-invent/First-to-File AIPLA believes that the first to file standard is the best practice for a harmonized patent system. International Grace Period AIPLA supports a grace period that is personal, i.e., which covers pre- filing disclosures made by or on behalf of the applicant, thereby providing appropriate safeguards to applicants, while retaining an appropriate level of certainty and fairness to the public. Prior Art AIPLA supports a treaty having a definition of prior art which has no geographical restrictions, i.e., disclosure anywhere in the world which is reasonably accessible to the public should be considered as prior art.

10 Pending Applications as Prior Art AIPLA supports a harmonized patent treaty which would provide that all patents or published applications have a prior art effect from their global priority date or Paris Convention date. AIPLA supports a treaty providing that the effective global priority date may be used for purposes of both novelty and obviousness. AIPLA supports a treaty which would eliminate the loss of rights dictated under section 35 USC 102(b), abandonment under section 102(c) and premature foreign patenting under section 102(d)

11 Other Organizations Generally, most of the other national U.S. Bar Associations are in agreement, including: IPO, ABA, NAM & BIO. Some organizations support these changes for U.S. law even without harmonization. Next Meeting of NGO’s Jan in Geneva sponsored by AIPPI

12 For further information contact: Samson Helfgott KMZ Rosenman New York, N.Y. ph. (212) fax (212)