Total Documents: 24


Patent Harmonisation Activities

Document No: PUB 21G/21 Posted: 22 December 2021

1.                   Introduction

There have been two main areas of activity concerning attempts to harmonise and improve the patent system in 2021: Substantive patent law harmonisation (SPLH) in conjunction with the B+ group of WIPO nations and procedural harmonisation before the IP5 group of Patent Offices.

2.                   SPLH

In my article for the IP Federation Review last year, I summarised the major points contained in the “Policy and Elements for a Possible Substantive Patent Harmonisation Package” submission (the Elements Paper) made by the Industry Trilateral (IT3, comprising American Intellectual Property Association, BusinessEurope, Intellectual Property Owners Association, and the Japan Intellectual Property Association) to the B+ group of WIPO nations (which was established to promote and facilitate progress on SPLH) in September 2020. This resulted in a number of questions from the B+ which the IT3 replied to at a meeting in May 2021. In addition, the B+ had requested the IT3 to produce a set of objective criteria to assist in clarifying the scope of prior user rights and the IT3 has done significant work on this in 2021. Finally, the IT3 agreed that the B+ Patent Offices should be free to publish the Elements Paper to aid in consultation and discussion on this important topic even though there are still items yet to be agreed upon by the IT3. The questions from the B+ on the Elements Paper covered the major topics contained within it: grace period, conflicting applications and prior user rights (PUR). The major concerns were with the complexity of the paper and whether the Elements Paper provides sufficient safeguards to prevent the proposed system becoming a “first to publish system” (one of the stated objectives of the proposals put forward is that the new system should not become a first to publish one). The IT3 will consider the feedback from the B+ on these two issues further. The objective criteria are intended to assist in determining the scope of prior user rights once these have accrued and to provide greater certainty for patent holders and third parties on these rights. The discussions include three main activities: (i) changes in the volume of the product produced from that which the third party produced when it established its prior user right, (ii) changes or modifications to the original embodiment produced by the third party and (iii) changes in the category or type of infringing act, for example importing a product rather than manufacturing it. It is hoped that the IT3 can make progress on potential improvements to the Elements Paper and the objective criteria on the scope of PUR in the near future. The publication of the Elements Paper should also enable further feedback to be obtained from other stakeholders benefitting the process.

3.                   IP5 discussions on procedural harmonisation

(i)                  Introduction

In February 2021 there were joint meetings of the IP5 (the Chinese, European, Japanese, Korean and US Patent Offices) with the IP5 Industry group (the IT3 plus Patent Public Advisory Committee (PPAC) and Korea Intellectual Property Association (KINPA) concerning the Industry Consultation Group (in February), the Global Dossier Task Force (March) and a meeting with the IP5 Heads in June.

(ii)                IP5 Industry Consultation Group (ICG) meeting

Future IP5 Patent Harmonisation Expert Panel (PHEP) topics: IP5 Industry expressed its expectation for IP5 Offices to agree on electronic signature standards so that a global assignment form could be filed with electronic signatures. IP5 Industry also expressed their interest in the harmonisation of allowable features in drawings. Measures taken by each IP5 Office that are beneficial to users: IP5 Industry representatives drew attention to specific and helpful measures implemented by individual Offices. IP5 NET/AI Task Force: IP5 Offices provided an overview of the current status and next steps in the work of the IP5 NET/AI Task Force, highlighting that the Task Force members were currently evaluating possible project proposals from the IP5 Offices according to the Scoping Document, in order to develop an IP5 NET/AI roadmap for the endorsement by the IP5 Heads in June.

(iii)              Global Dossier Task Force (GDTF) meeting

Feedback on current Global Dossier services: IP5 Industry gave favourable feedback on their experiences with the existing Global Dossier services being provided by the IP5 Offices stressing the importance of completeness, timeliness and availability of Global Dossier. Prioritisation of five Global Dossier tasks: IP5 Industry suggested demand-based prioritisation for the five Global Dossier tasks, indicating that XMLization and Inter-office Document Sharing are seen as two top priorities. IP5 Industry also expects progress in relation to Alerting, Legal Status and Applicant Name Standardisation but these are seen as long-term initiatives. NET/AI Utilisation: Each IP5 Office provided an update of the AI tools used in their own procedures. IP5 Industry expressed its hope that AI tools, after being developed and applied in the IP5 Offices, would become accessible to users as well.

(iv)              IP5 Heads/IP5 Industry Meeting

The meeting was jointly chaired by JPO and JIPA. Introductory remarks referred to a WIPO Green Event in Japan and its relevance to the Strategic Topic on the agenda.
  • Agenda Items
  1. Patent Harmonization Expert Panel (PHEP) New Topics: It was announced by the Offices that the two topics, Global Assignment and Allowable Features in Drawings, were due to be approved at the formal closed Heads meeting the next day. KIPO and USPTO will take the lead on the Global Assignment project whilst the JPO will lead on the harmonisation of features in drawings.
  2. NET/AI: A Roadmap has been produced by the Offices that focuses on both legal and IT aspects (this has now been published on the IP5 website), the European Patent Office (EPO) indicated that this is the foundation for Offices to excel, Offices now have to put it into practice.
IP5 Industry reported that it is setting up its own task force to assist the Offices.
  • Strategic Topic
IP5 Cooperation in a post-pandemic era The IP5 Offices indicated that digitalisation transformation is key. Many Offices had introduced digital signatures during the pandemic but further work on this still needs to be done as well as introducing video interviews/hearings. All seemed to be in agreement that there should be more study and discussion of the benefits of IP to society.
  • Next Meeting
The next IP5 Heads meeting will be organised by the EPO in collaboration with BusinessEurope in Munich the week of June 6–10th 2022. The EPO mentioned that the meeting would cover access­ibility of IP system to users and generation of pro-IP culture as well as increasing IP visibility in general and how it can solve societal and economic issues. Tony Rollins, Policy Advisor

Pilot for “PCT-IP5 search” / “CS&E”: update

Document No: PUB 20C/19 Posted: 20 January 2020

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”.

Patent harmonisation

Document No: PUB 20D/19 Posted: 20 January 2020

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.

Patent harmonisation

Document No: PUB 20G/18 Posted: 12 September 2018
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.

Policy Advisors Policy

Document No: PUB 4/16 Posted: 19 July 2016

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.

President and VPs Election Policy

Document No: PUB 3/16 Posted: 13 June 2016

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.

Patent Harmonisation – What is happening?

Document No: PUB 20G/15 Posted: 04 March 2016

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.


Patents and Standards

Document No: PUB 20H/15 Posted: 04 March 2016

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.



Progress on the EU Trade Secrets Directive

Document No: PUB 20I/15 Posted: 04 March 2016

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. 

Progress on the EU Trade Secrets Directive

Document No: PUB 20D/14 Posted: 03 March 2015

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.

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