K.M. Gopakumar
Reposted with permission from Third World Network, Link
Alexandra Bhattacharya and K M Gopakumar (Geneva)
Developing countries, during a discussion in WIPO on quality of patents, questioned the value of work-sharing arrangements among national/regional patent offices as a method of improving the quality of patents, and opposed efforts by developed countries to mainstream “work-sharing” in WIPO.
The 20th session of the Standing Committee on the Law of Patents is meeting in Geneva from January 27-31, 2014.
Since the 16th SCP session in 2011 developed countries have made several submissions with the explicit objective of setting a work program in SCP onwork-sharing. Under the pretext of wanting to improve “quality of patents” these submissions seek to use WIPO, an intergovernmental forum to promote as a norm work-sharing among patent offices and consequently reliance on other patent offices with the objective of expediting patent examination and accelerating the granting of patents.
Work sharing is broad term used to describe various bilateral and plurilateral arrangements between/among patent offices to assist countries to expedite the examination of applications and granting of patents. These arrangements include: use of search and examination results of other patentoffice; accelerating the granting of a patent based on the decision of another patent office; collaboration between/among patent offices to jointly exam patent applications; various platforms and tools to share information on search and examination.
Developing countries have in the past resisted the efforts of developed countries. Their main concern has been that the developed countryproposals fail to address the real factors that affect “quality of patents” (that is the problem of low standards of patentability criteria applied) and would only facilitate the granting of more patents (most of which originatefrom developed countries).
Developing countries are also concerned that the proposals areabout creating a norm in WIPO that encourages reliance on foreign patent offices, and as a result undermining the current flexibility available to WIPO Member States to determine the threshold for patentability as per their development needs. Effectively such arrangements are de-facto harmonization of substantive patent law. In the long term, work-sharing will also reduce capacity to examine patent applications at the national level, according tonational interests.
At the on-going SCP session, developing countries objected to the setting up a work-program on work sharing, maintaining that efforts on work sharing should be voluntary in nature. They also opposed any deliberations on voluntary work-sharing efforts in a multilateral forum like SCP. They further expressed concern with regard to the lack of a shared understanding“quality of patents”, stressing that deliberations on quality of patents should not have any bearing on the harmonisation of substantive patent law including on patentability criteria.
Proposals on quality of patents including work-sharing
Developed country proposals on the topic of quality of patentsincluding work-sharing that have been submitted to the previous SCP sessions are: proposal from Denmark (SCP/17/7); proposal from USA (SCP/17/10); joint proposal from Canada and UK ( SCP/18/9); proposal from USA (SCP/19/4) and Spain (SCP/19/5). The most recent proposal is a joint proposal by the Republic of Korea, the United Kingdom and the United States of America (SCP/20/11Rev.).
The origin of a series of proposals to set a work program on work sharing in SCP began with a joint proposal by Canada and the United Kingdom for a Work Program on Quality of Patents (SCP/16/5) and a revised proposal (SCP/17/8) on the same. The documents proposed a work plan with three main components: technical infrastructure development, information exchange on quality of patents and a process improvement to identify ways in which offices can improve patent granting processes.
At the 17th SCP session Denmark submitted a complementary proposal (SCP/17/7) on how toimprove the quality of search and examination of national patent applications by using foreign search and examination work performed by other patent offices.
US also made a proposal at the same session. It proposed that the SCP focus on: (i) a survey of thepatent offices of Member States inviting them to reflect upon and share thehigh level goals that they consider crucial to a patenting system that produces high quality patents; and (ii) a questionnaire survey for national offices which seeks to enquire what various national offices consider to be high quality patents and how the process of patent examination and grant is evaluated against this understanding of high quality patents (SCP/17/10).
For the eighteenth SCP, Canada and the UK further submitted a proposal for a questionnaire survey (SCP/18/9). No agreement was reached on any of the proposals.
At the 19th session US made a new proposal regarding efficiencies of the patent system (SCP/19/4), which contained thefollowing four elements: (a) carry out an inventory of work sharing programs that are or have been taking place between offices, bilaterally, multilaterally and regionally, and evaluate their benefits for IP offices, for users of the IPsystem and for the general public. (b) explore ways to further refine and increase the usefulness of these programs, such as by determining best practices that could be adopted by participating offices on a voluntary basis. (c) explore the tools that could facilitate effective work sharing programsbetween participating offices. (d) conduct workshops on how work-sharing programs can be effectively implemented.
Although no agreement could be reached on taking US proposals forward, the 19th session directed the Secretariat to prepare for the 20th Session of SCP a compilation of information received from Member sates on the work sharing programs.
Spain also made a proposal to the 19th session (SCP/19/5) suggesting that WIPO should coordinate studies on the definition of a person skilled in the art with the objective to provide information on how different thresholds of inventive stepapplied in different Member States has led to different outcomes.
The delegations of the Republic of Korea, the United Kingdom and the United States of America have submitted yet another joint proposal (SCP/20/11 Rev) regarding Work Sharing between Offices in order to Improve Efficiencies of the PatentSystem, for the consideration of the current SCP session. The proposal specifically calls for: (1) dedication of a page on the WIPO website on work sharing and collaborative activities between patent offices: (ii) the organization of annual conferences, on the margins of the SCP sessions, on international work sharing and collaboration to share national and regional experiences and best practices and to find ways to improve the usefulness of these programs to IP offices, to users of the IP system and to the general public.
As requested by the previous SCP session, WIPO Secretariat hasalso compiled in document SCP/20/8, a document on work sharing programs among patent offices and use of external information for search and examination based on information received from member states. Some of key arrangements that are of importance to developed countries include:
Vancouver Group: an arrangement among patent offices of Australia, Canada and UK to rely on wherever possible on the granted patent of a participating office or on the search and examination report of any of the participating office in coming up with their own report on the same application.
Patent Prosecution Highway (PPH): Under this arrangement if the Office of First Filing (OFF) makes a decision to grant a patent to an application then the same application is eligible to go through an accelerated examination in the Office of Second Filing (OSF) at the request of the patent applicant. Initially PPH was an arrangement between USPTO and Japan Patent office (JPO) set up in 2006. However, a pilot project known as Global PPH has been launched on 6th January 2014. PPH operates on the basis of bilateral agreements among the PPH participating offices. Under Global PPH a patent applicant can make a request for the accelerated examination if the claims have been found to be acceptable by any of the Global PPH participating offices.
[According to Global PPH website there are 17 patent offices participating in the pilot project. These Offices are : IP Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), National Board of Patents and Registration of Finland (NBPR), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (IPO), United States Patent and Trademark Office (USPTO)]
IP5 : Similar to PPH, this arrangement is among the world’s largest five patent offices i.e. the European Patent Office (EPO), the Japanese Patent Office(JPO), the Korean Patent Office (KIPO), the State Intellectual Property Office of China (SIPO) and the US Patent and Trademark Office (USPTO).
Secretariat’s document 20/8 also identifies certain challenges with regard to work sharing arrangements. One notable challenge highlighted is the absence of substantive harmonization of patent law. According to the document “different substantive standards employed by offices and understandingthose differences were considered as one of the hindrances in effective use of foreign search and examination work. In particular, divergence of office practices and different claiminterpretation practices, including the assessment of amended claims, as well as different classification schemes employed by offices were said to complicate the reutilization of other offices’ search and examination results”.
Discussion on quality of patents including work-sharing.
India in a detailed intervention said that the quality of patents was important for both national development and for the smooth transfer of technology. It noted that “quality” was not equal to all countries, which had different levels of development, and work sharing should not be the ultimate solution for the improving the quality of patents.
It referred to the statement of the Development Agenda Group (DAG) during the 3rd session of the Patent Cooperation Treaty (PCT) Working Group, which noted that some Members of the PCT were International Searching Authorities (ISA) and while others were not. In this context, it opposed any attempt at harmonization in the name of quality. As a way forward it preferred, the enhancement of IP offices, India said.
[The WIPO Patent Cooperation Treaty (PCT) allows a right holder to simultaneously seek protection for an invention in 148 countries by filing one international patent application under the PCT. An ISA is an authority (usually a national patent office) authorized under the PCTSystem , to find the most relevant prior art documents regarding the claimed subject matter. There are currently 17 ISAs (including India) within the PCT framework.]
Brazil underlined the importance of having an inclusive debate, which “encompassed all the users of the system”. It said that there was no one-size-fits all approach to the debate and each country had the right to calibrate its laws according to national priorities. Before launching a work plan, there was a prerequisite for a deeper debate on the quality of patents. On the proposal by UK, US and Korea (SCP/20/11 Rev) it noted that due to the late submission of the document it did not have time to consult its capital.
Algeria on behalf of the Africa Group reiterated its concern about the lack of a precise definition of the concept of “quality of patent” adding that quality of patents is largely based on the criteria of patentability, which essentially depends on the development objectives of each country.
It expressed concern that the proposed initiativeswill result in harmonization of practices in the field of patent law, prejudicing flexibility in patent law at the national level. It stressed that quality of patents refers to the ability of the patent office to apply the domesticpatent law effectively, as the criteria for patentability is defined and applied differently among national patent legislations. It referred to paragraph 49 of the study by the Secretariat (SCP/20/8) which cites differences in substantive laws as the first challenge to work sharing processes.
It further stressed that quality cannot be improved by simply adopting the practice of other patent offices, adding that it is important for national offices to retain discretion in determining the patentability criteria.
On the questionnaire proposed by Canada and the UK in document SCP/18/7, Algeria said that it focused only on issues of how national Offices define patent quality, how they measure the quality of granted patents, and the how they utilize or may utilize better foreign search and examination work. In this regard, it stressed that the issue of patent quality is not just limited to the quality of patent examination,adding that strong and effective patent oppositions too play a significant role in ensuring a high quality patent.
On Spain’s proposal, Algeria recalled that “inventive step” is not the only criteria that is determinative of the quality of a patent as it also involves issues of novelty, industrial applicability, and sufficiency of disclosure. It noted the importance of addressing these factors in order to understand howthese elements are evaluated in different countries and their impact on patent quality.
Algeria also cautioned that discussion on patentability criteria should not be about substantive harmonization. It also added the need to consider different thresholds in national patent legislations for “sufficiency of disclosure” as a problem linked to patent quality, adding that it would lead to identification of practical means for addressing issues related to insufficient disclosure.
Iran said that the SCP still had no common ground with respect to quality of patents and there was a need for a definition of the “quality” before any discussion of work plan. It reiterated that any future work on quality of patents should not lead to harmonization. It also emphasized the different roles of patents and the different levels of development amongst member states; the need for capacity building for IP offices and the need to take into account all relevant DA Recommendations. It also stressed on the need for adequate disclosure in patent applications.
Kenya said that it appreciated the availability of external patent information and regularly usedthem. However such information including examination reports were not binding on the Kenyan patent examiner or Kenya as such and merely served the purpose of facilitating the evaluation of novelty claimed in the application filed in Kenya or in the patent granted on the basis of that application. This ensured that Kenya had the opportunity to ensure the quality of patents granted within her territory as well as the safeguarding of public national interest including availing herself the flexibilities accorded by the patent system.
It further said that while it supported continued availability of such information, any further development of the same including work sharing initiatives should not obligate Kenya towards automatic acceptance of the reports of the work shared, and thus any international efforts should not lead to harmonization of substantive patent law.
Japan, on behalf of Group B, emphasized the importance of quality of patents in the context of significant difficulties of IP offices in reducing backlog. In this context, it stated that work sharing allowed offices to make use of existing resources. It was also useful for the users of the patent system in acquiring patent protection. It also reiterated its support for the new joint proposal of UK, Korea and US (SCP/20/11 REV.) and for all the other proposals currently on the table. It noted that the SCP should bear in mind the objectives of the patent system and work on the Quality of Patents should form fundamental basis for further work.
Czech Republic, on behalf of CEBS also welcomed the new proposal and called for the launching of a comparative study on the inventive step concept based on the Spanish proposal.
Greece, on behalf of EU expressed support for all Group B proposals, noting that 6 EU members had submitted proposals on Quality of Patents. It was strongly in favor of a work program in this area and particularly called for the launching of a questionnaire based on all the proposals on the table. It also called for further exploration in the form of a study of how laws limit potential work sharing and for the Spanish proposal on the “inventive step” concept to become a new standing agenda item.
With regard to opposition systems, the EU noted that they were a simple, rapid and in expensive alternative to litigation and also called for a compilation by the secretariat of different models of opposition systems and revocation procedures. It reiterated the freedom of all WIPO member states to incorporate these procedures into their national legislation
Spain in explaining its previous proposal (SCP/19/5) said that the focus on the inventive step concept could lead to better examination and better quality of patents and avoid the granting of undeserving patents. It also asked that the issue of “inventive step” be dealt separately within the discussion on quality of patents or as a separate agenda item.
Spain, Denmark, Russia, CEBs and the US also expressed support for further work on quality of patents thorough work sharing programs.
Cuba expressed support with respect to Spain’s proposal for furtheranalysis of the inventive step. However, it added that the there was a need to ensure that this analysis does not affect a country’s sovereignty.
Third World Network, an observer in SCP reiterated that there was no shared understanding of the meaning “quality” and there was a need to arrive on the meaning of term “quality” before discussing the work program. It added that efficiency should not be seen as being synonymous with “quality”. TWN added that there was a need for greater effort on improving the quality and not the quantity of patents. In this respect, patent offices should be judged by the quality of patents they grant rather than the number of patents they issue.
It stressed that work sharing was not the solution to improve the quality of patents as the effect of work-sharing (which promotes reliance on search and examination results of another (usually developed country) patent office is the same as harmonization of substantive patent law.
With regards to the proposal of UK, US and Korea to set up a webpage on the WIPO webpage, TWN stated that this proposal lacked legitimacy of the multilateral system and the SCP should not be used to legitimize plurilateral initiatives (such as those found in the Patent Prosecution Highway (PPH).
The Chair of the SCP, Mokhtar Warida noted that all statements of member stateswould be taken into account, adding that further information was required on specific activities put forward including the: (i) development of a questionnaire based on all the proposals on the table (based on UK/Canada proposal for a questionnaire survey (SCP/18/9); (ii) a study on the inventive step based on the Spanish proposal (SCP/19/5) looking at the definition of “a person skilled in the art” (iii) study on the disclosure requirement (supported by Brazil and India) (iv) the components (webpage and seminar on theexisting system for work sharing) of the recently circulated UK/US/Korea proposal (SCP/20/11Rev) and (v) EU proposal on a study on how laws could potentially limit work-sharing amongst offices.
These proposals are expected to feed into the discussion on the “Future Work” which is expected to be held at the end of the session. The preliminary round of discussion on ascertaining a work program showed that there was no agreement on taking any of the proposals on quality of patents forward.
[Note: Developed countries are also pushing for a work sharing agenda in the Patent Cooperation Treaty (PCT) Working Group. During the 6th session of the PCT Working Group in May 2013, UK and US made a joint proposal for the formal integration of PPH with the PCT. This proposal will be further discussed during the 7th Session of PCT working Group, which will be held in Geneva around June 2014.
Work sharing initiatives have also obtained the political blessings of G8. Report of the G8 Intellectual Property Experts Group Meeting and G8 Leaders Declaration in 2009 stressed the importance of PPH.
The Declaration states: “We also reaffirm the importance of Patent Cooperation Treaty and global patent harmonisation such as Substantive Patent Law Treaty (SPLT) and acknowledge the expansion of international patent collaboration including work-sharing initiatives such as the Patent Prosecution Highway”.
The Expert Group Meeting Reports states “we also acknowledge the expansion of patent collaboration, including work-sharing initiatives such as the Patent Prosecution Highway (PPH) to contribute to technological innovation and economic development by ensuring a high-quality, expeditious, and cost-effective examination process”. ]
