EU Community Patent, Substantive Patent Harmonization and PCT Revision D.C. Patent Lawyers Club March 10, 2002

Albert Tramposch Counsel, Burns Doane Swecker & Mathis LLP Alexandria, VA Co-Director, Intellectual Property Program George Mason University School of Law, Arlington VA Former Director of Industrial Property Law World Intellectual Property Organization (WIPO)

International Computer Legislation? You cannot obtain one that is made abroad Even if it has identical specifications and meets identical requirements The cost is determined (no competition) Ownership is taxed yearly It stops working on a date certain, whether or not you are done with it Sanctioned under WTO Agreement!

At the conclusion of this program, please deposit your illegal Japanese laptop computers in the box by the door.

International Patent Legislation You cannot obtain one that is made abroad Even if it has identical specifications and meets identical requirements The cost is determined (no competition) Ownership is taxed yearly It stops working on a date certain, whether or not you are done with it Sanctioned under WTO Agreement!

Free Trade in IP Goods & Services? Uniformity of regulation - Harmonization Economies of scale - mutual recognition Non-discrimination - same rights no matter where obtained

Intellectual = Personal or Real? Real Property – Governed exclusively by national law – Unique to the territory, not movable Personal Property (goods) – Subject to international law – Not unique to the territory, movable Intellectual Property Protection – Governed exclusively by national law – Not unique to the territory? Movable?

A Question of National Sovereignty? Internationalization of IP Law 1880’s - Paris and Berne Conventions Globalization of IP Law 1990’s – WTO and TRIPS Agreements

A Patent Diversion: The New EU Community Patent

2490 th Council Meeting Minutes Framework adopted for Community Patent: – File in national office or EPO; examine by EPO – Jurisdictional (Court) System – Languages and Costs – Role of National Patent Offices – Distribution of Fees Review 5 years after first patent granted

Courts Community Patent Court to be established – As of 2010 – Under Court of Justice – In Luxembourg – First instance and appeals In meantime, each country designates a court

Languages Up to grant, English, French or German, as in EPO (claims in all three) Upon grant, translate all claims into all official languages of EU (now 11; could be up to 19, but countries can decline translation) ?? Also, enlarged abstract, or first three pages of application ??

Cost of the Community Patent About €25,000 ($27,000) for up to 25 states About half the cost through the EPO in 8 states

Other Resources There is an EU Press Release at /2129/ /2129/ The minutes of the Council Meeting, containing the outline of the decision on the Community Patent, are attached

International Patent Harmonization Began in 1984 (grace period discussions) Committees of Experts Failed Diplomatic Conference in 1991 U.S. withdrawal from discussions Procedural Harmonization: – Committees of Experts and “SCP” Patent Law Treaty in 2000 Revival of substantive discussions (SPLT)

2002 Patent Law Treaty Harmonizes and simplifies formal requirements for national and regional applications and patents – especially filing date requirements – incorporates PCT “form or contents” requirements – express provision for electronic filing – standardized Forms-single application for national and international filings – safeguards against unintentional loss of rights – does not cover substantive patent law – a CP can be more liberal, except for filing date

2002 Patent Law Treaty 3 ratifications at this stage; 10 are needed for entry into force USPTO has circulated accession and implementation package to other agencies for clearance

Developments Outside SCP PCT Modifications – 30 months for Chapter II – PCT Revision Process WIPO ‘Patent Agenda’ WIPO management changes

Developments Outside SCP European Patent Convention Revision – Diplomatic Conference, Dec – ‘Second basket’ European Community Biotech Directive Community Patent – language issue

The Ultimate Goal Mutual recognition of search and examination results among selected offices Reduction of duplication of work Reduction of costs? Increased uniformity of rights worldwide More practical alternative to a “World Patent”

SPLT: agreement in principle on a number of provisions Scope of the SPLT: – exclusion of infringement issues, except for the provisions on interpretation of claims, which would apply in infringement cases – covers national and regional applications, international applications when they have entered the national phase Right to the patent Application – abstract should merely serve the purpose of information SPLT

SPLT: agreement in principle on a number of provisions Deep harmonization??? SPLT

SPLT: agreement in principle on a number of provisions Amendment and correction of applications – majority: no inclusion of abstract for disclosure – possibility of correction of granted patents? Definition of prior art: everything made available before the filing or priority date – position of the USA: no opposition in principle inclusion of secret prior use (loss of rights) – earlier applications: international applications under the PCT application to novelty only SPLT

SPLT: agreement in principle on a number of provisions Sufficiency of disclosure – discussion on “undue experimentation” – deposit of biological material Claims – “support” versus “written description” requirement Definition of novelty Definition of inventive step/non-obviousness SPLT

SPLT: Some debated issues Patentable subject matter and technical character Article 12(1) and (5) USA wish broad provision European countries wish to include only inventions which have a technical character What should be the general rule and what the exception? TRIPS Article 27.2 and 3 exceptions Deep harmonization?

SPLT: Some debated issues Exceptions and grounds for refusal/invalidation Proposals by Brazil and the Dominican Republic on Articles 2 and 13/14 Support by a number of developing countries, opposition by some industrialized countries Topics addressed: public health, access to genetic resources, traditional knowledge, folklore Opposition of the USA SPLT

SPLT: Some debated issues Equivalents and declarations made during prosecution (file wrapper estoppel) Principle of equivalents agreed in principle Discussion on which methodology to apply and at which point in time to take into account equivalents Some discussion on file wrapper estoppel SPLT

SPLT: Some debated issues Industrial applicability/utility Industrial applicability versus utility WIPO had, in 2001, questioned the need for a distinct requirement. This was not accepted by the SCP Possible compromise text or no deep harmonization? Not a “make or break” issue SPLT

SPLT: Some debated issues Grace period Was a major blockage to the conclusion of the 1991 Treaty In SCP, 3 rounds of discussion so far: – general information by countries – delinkage from other issues – discussion of more detailed issues (scope of a grace period, duration, third parties rights, etc.) No clear opposition against grace period SPLT

SPLT: Some debated issues Additional requirements relating to description “technical” citation of prior art (“mandatory” versus “preferable”) presentation of invention as a solution to a problem “best mode” requirement SPLT

SPLT: Working Group Established by SCP/6 on a proposal by the USA First session held during SCP/7 (May 2002) Topics under discussion: – unity of invention – link of claims – number of claims – requirement of “clear and concise” claims – procedures to treat complex applications Second session to be held in November 2002 SPLT

PCT Reform Done deal: 30 month time limit for Chapter 1 – 11 reservations left Future: Enhanced search report to be published with application Automatic designation of all countries, but files not sent to designated office until requested PLT-like forgiveness for missing time limits For more information, see rm/documents/pctreform.pps

Harmonization and the USPTO Strategic Plan To avoid “Patent Office Meltdown” – Long pendency – Poor quality (‘rationalized’ work = no work) Work sharing – search, and examination? Deferred examination Post-grant opposition, etc.

Is it time to think outside the box? Outside the 1836 box And the 1991 box Maybe all of the boxes …

Patent Cost Issues The cost of a mid-size car? More for Less? Patent Office Meltdown? Languages, Languages, Languages Cost of litigation – not addressed by harmonization

Negotiation Venues Global International Regional Trilateral Bilateral Unilateral

Forward on All Fronts?

Thank you.