Substantive Patent Law Harmonisation (SPLH)

Representatives of the IP Federation have continued to play a leading role in the development of global thinking on improving the international patent system, especially through increased harmonisation of substantive law. Currently the patent laws of leading industrial nations or regions, such as the US, Japan and Europe, differ on several fundamental principles. While business has become accustomed to managing these differences, greater harmonisation of patent laws would bring considerable benefits through reduced transaction costs in global patenting and lower obstacles to trade. Crucially though, the resulting system must offer the best incentives to invent, and rewards for investment in innovation.

Pilot doing well so far, still open to PCT applicants until 30 June 2020

Subject to the successful conclusion of a pilot, which began on 1 July 2018 and closes to volunteering PCT applicants on 30 June 2020, it is hoped that in a few years’ time all PCT applicants will be offered a procedural option providing for – one of the IP5 offices (European, US, Japanese, Chinese, and Korean) receiving a PCT application to act as a “main ISA” leading a collaborative exercise, the result of which will be that the main ISA issues a search report and written opinion in Chapter I based on both its own work and on inputs from the other four offices (called “peer ISAs”). Such an option is currently officially called “PCT collaborative search and examination (CS&E)”; but to avoid possible confusion with other initiatives (and possible future renaming), in this report it is called “PCT-IP5 search”.

The last review in Trends and Events on the topic of patent harmonisation (cf, Trends and Events, 2015) looked forward to a stepping up of work on SPLH from the B+ Sub-Group and from the Industry Trilateral, all working under the remit of the Group B+. Through 2017 and to date in 2018, the Industry Trilateral (IT3) has met numerous times, and with increasing frequency, both in person and via WebEx calls with the aim of trying to reach agreement on a possible SPLH package that could be acceptable to users.

The IP Federation recognises and values the ongoing contributions made by many of its former member representatives, some of whom have previously continued to be part of the Federation as elected vice-presidents. The title of “vice-president” is now reserved for specific positions within the Federation and is therefore no longer available for other purposes. The Federation wishes to create a new class of associate to which former member representatives who continue to contribute to the ongoing work of the Federation may belong. This type of associate is called a “policy advisor”. This policy is intended to set out the principles by which the Federation selects and engages with its policy advisors.

The IP Federation relies heavily on the work carried out on its behalf by the president. The Federation recognises that the burden of the office of president could be eased by appointing vice-presidents to assist with the duties of the president. The Federation also recognises that there is benefit to be had in continuity as far as the office of president is concerned. This policy sets out the process by which the Federation intends to select and appoint presidents and vice-presidents.

There are a number of patent harmonisation initiatives ongoing, some driven by the IP5 Of­fices and some through WIPO and the informal B+ subgroup. Most of these initiatives are con­cerned with procedural improvements aimed at making the patent prosecution process simpler to the benefit of the offices and users. However, since 2013 there has been a major push towards substantive patent law harmonisation driven by the chair of the Group B+, John Alty.

The Global Dossier (GD) project arose out of work initiated by the Trilateral Offices including that on the Common Application Format (CAF) and Common Citation Document (CCD), with the purpose of agreeing common procedures between the Offices. Both CAF and CCD have subsequently been taken over by the IP5 Heads.

 

In October 2014, the European Commission began a public consultation on patents and standards. The aim of this consultation was to gather information and views on inter­play between standardisation and intellectual property rights (IPR) such as patents. The purpose of the consultation was to allow stakeholders interested in stan­dardisa­tion involving patents to bring to the Commission’s attention their views on:

–how the current framework governing standardisation involving patents performs; and

–how it should evolve to ensure that standardisation remains efficient and adapted to the fast-changing economic and technological environment.

 

 

Following major developments during December 2015, we can now report that the EU Trade Secrets Directive has moved to a near-final stage, with the final legislation looking likely to be passed early in the New Year. Although much remained to be finalised as recently as late autumn, a sustained push by the out-going Luxembourg Presidency of the EU Council led to several “trilogue” meetings in the early winter 2015, with a “provisional agreement” being reached on 15 December. The text in question was then released for public consump­tion on 22 December, allowing us to assess the quality and likely impact of the Directive. We can also report on the effectiveness of the IP Federation’s efforts to engage with the legislative process, which appear to have had a positive impact. 

2014 has seen significant progress in relation to the EU’s legislative efforts on trade sec­rets. Since the December 2013 edition of Trends and Events went to press, we have seen: (i) the publication of the Commission’s initial proposal for legislation; (ii) negotiations within the Council of the European Union resulting in an agreed compromise text for the Directive; and (iii) early exchanges of views and draft opinions within the European Parliament.

In 2013 the IP Federation, based on discussions in the Patent Committee and at Council, has responded to various consultations and discussion papers from the UK IPO and EPO.