The delays in proceeding with the Patent Law Harmonization Treaty and the agreement between United States and Japan to try to implement some of its proposals independent of the treaty itself corning into effect were discussed in our Information Letter N.S. 182.

Notwithstanding the reluctance of the United States to progress further with harmonization, the Director General of WIPO has proposed that the diplomatic conference on harmonization should be reconvened in May 1995. Accompanying the proposal for reconvening the conference is a suggestion that the treaty should be significantly watered down and that all provisions relating to requirements that states adopt a first-to-file system or permit prior user rights, which are the subject of controversy in the United States, should be deleted from the treaty. Conversely, however, the proposal also suggests deleting from the treaty all references to grace periods in respect of prior use and requirements for prompt examination of applications. In one proposal made by the Director General the requirements for early publication of an application and for the abolition of pre-grant oppositions remain. However, other alternatives suggested by the Director General exclude these provisions as well.

Independent of the WIPO proposal, the Japanese Patent Office has made a proposal directly to the United States that the Japanese should give up pre-grant opposition proceedings (which may delay the grant of a patent and thus delay the point at which a patent can be enforced) in return for the United States agreement to early publication of pending applications so that competitors may have early knowledge of patents that are likely to be granted, and thus of technological developments from which they may be precluded, or for which license fee payments may be required.

June 1994 Index