The developments in the 1960's and 70's and the later adaptations of them such as the Eurasian Patent Convention and the GCC Patent Office were all largely of a procedural nature. These have continued with improvements of PCT. Among these are simplification of the steps required to file the application and to delay national phase entry until thirty months from priority, and permitting some of the work previously done at the point of national phase entry, for example filing of various documents, to be done at the time of original filing of the PCT application. Further improvements have occurred in he quality of the search report, and from January 1, 2009, providing for a supplemental search report carried out by a second searching authority.
However, increasing global trade led to a need to address more substantive issues in international pa tent law and towards the end of the twentieth century pressure again built for the ideal that had been proposed but not achieved in the 1870's: to create a global patent system. The first step towards this was the TRIPS agreement. The second was intended to be a Patent Law Treaty that would harmonize aspects of substantive patent law.
TRIPS
Original thinking on the topic of increasing uniformity in patent law around the world was to use the traditional vehicle of the Paris Convention. Unfortunately a meeting convened for this purpose in Nairobi in 1981 was unable to achieve any useful result, having become enmeshed in the question of whether the Convention should be amended to permit exclusive compulsory licensing of patents in cases where the invention was not being worked in the country. This led to a search for an alternative vehicle for modernizing international patent law. This was found in the Uruguay Round negotiations for revision of the General Agreement on Tariffs and Trade. The result was the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS for short). This agreement is discussed in detail in the materials in patent law treaties. Among its features was the requirement that all members provide a minimum term for patent protection and, subject to a transition period for developing countries, that they do not discriminate between different areas of technology having regard to the availability of patent protection.
Patent Law Treaty
This, however still left open a number of differences between countries, perhaps most importantly what constituted prior art and the definition of novelty. A draft treaty addressing these issues was prepared in the early 1990s and a diplomatic conference convened in The Hague June 1991. The draft would have required the United States to change its system to one based on a first to file approach to novelty. While the administration that had been in office up to January 1991 had been willing to accept this as a possibility if appropriate concessions on other issues could be obtained from Europe in return, the new Clinton administration was not willing to do this. In the end a limited treaty addressing formal aspects of patent granting procedures and patent maintenance was adopted as the Patent Law Treaty.[38]
The aborted draft for a substantive law treaty did, however, have some significance in that its proposed provision on novelty provided that an inventor's own publication of an invention within a year prior to filing a patent application would not be prejudicial to the validity of any patent application of patent for that invention. This feature has as a result been incorporated into a number of patent laws, including those of Mexico, Canada, the Andean Community, Australia and South Korea.
At about the same time, there seems to have been a world-wide concern about the lack of patenting activity by small and medium sized enterprises and a surge of enthusiasm for providing "second tier protection" by way of utility models or "petty patents" to provide for cheap ways in which short term protection could be afforded to those who could not afford to pay for patent full patent protection and a proper examination of their applications. Today, however, this wave of enthusiasm seems to be waning as the realization that the existence of large numbers of unexamined rights covering minor improvements can have a negative impact on the development of new technology.
Following the adoption of the Patent Law Treaty, attention again turned to improved harmonization of substantive patent law issues. And proposals were made for a Substantive Patent Law Treaty (SPLT). However, these proposals did not proceed as far or as fast as was hoped and have to some extent been replaced by more limited objectives such as patent law provisions of free trade agreements and the establishment of enhanced cooperation between individual patent offices. Coincident with these efforts there have been increasing concerns in some countries about their needs to be able to address health care issues when patents on relevant drugs are held by foreigners and about what is perceived by some to be appropriation by foreign countries of their genetic resources and traditional knowledge, all of which creates additional problems in creation of a world-wide system.
Following two failed attempts to move forward with a Substantive Patent Law Treaty in 2006, Brigid Quinn, deputy director at the office of public affairs of the U.S. Patent and Trademark Office, commented "The U.S. is disappointed that there was no agreement to move forward with substantive patent law harmonization on prior art issues in WIPO," and "we think that such an approach would benefit all countries by allowing them to rely more on examination work performed in other countries under common examination standards." She also stated that "the U.S. intends to pursue harmonization of prior art issues within the group of developed countries, and will evaluate in the future whether an agreement may be possible in WIPO at some point."
Free Trade Agreements
In fact the United States had already embarked on a series of agreements with individual countries that contained substantial provisions relating to patent law. The first significant step was the North American Free Trade Agreement, but this has been followed by agreements with Chile, Singapore, Australia, Morocco, Bahrain, Dominican Republic, Costa Rica, El Salvador, Oman, Guatemala, Honduras, Nicaragua and Peru. [39] All of the agreements contain a number of patent provisions:
1. Most of the agreements, those with Chile and Morocco being exceptions, contain TRIPS-type provisions relating to what constitutes patentable subject matter, although as noted below, some of the agreements require the use of patent rather than TRIPS’ other option of plant variety protection for plants.
2. Provided that patents may only be revoked on the same grounds as the applications for them could have been refused or for inequitable conduct.
3. A requirement in all agreements, except that with Chile and Peru[40], to provide for patent term extension to compensate for delays in marketing of pharmaceuticals as a result of the need to secure regulatory approval.
4. All agreements permit limited exceptions from the exclusivity provided by a patent “provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of legitimate interests of third parties.”
5. Where activities within the scope of a patent claim are permitted to allow a third party intending to market a pharmaceutical product after a patent has expired to produce data to enable it to obtain marketing approval for such post-expiration marketing, any product produced shall be used solely for this purpose and shall not be exported for any purposes other than for obtaining such approval.
6. All contain a requirement to provide for patent term extension to compensate for unreasonable delays in the grant of a patent.[41]
7. All agreements, except that with Singapore, provide for a one-year grace period for determining novelty when the publication in question derives from the applicant.
8. All agreements, except those with Singapore and Chile, require that patents include a written description that enables the invention to be carried out without undue experimentation and is sufficient to show the inventor had possession of the claimed invention at the filing date. The agreements with Australia, Morocco, Oman and the Central American countries also require that the "credible specific, substantial" utility test of US law be used as the test for whether an invention has industrial applicability.
Improved Cooperation Between Individual Patent Offices
In addition to the inclusion of provisions relating to substantive patent law included in free trade agreements, the United States, the European Patent Office and the Japanese Patent Office have been cooperating on several projects for many years.[42] These have been aimed largely at procedural improvements. Cooperation with the European Patent Office includes a program for electronic exchange of priority documents to reduce the workload in each office. There are continuing efforts by all three offices.[43]
During 2006, a new form of cooperation appeared in the form of a patent prosecution highway between the United States Patent and Trademark Office and the Japanese Patent Office. The patent prosecution highway enables applicants who have secured allowance of applications in one of these patent offices to obtain expedited prosecution of an application containing equivalent claims in the other. During 2007, additional patent prosecution highways were created between the United States and the United Kingdom and also between Japan and both the United Kingdom and Korea. Additional highways opened by the United States include those with Australia, Canada, Denmark, Singapore, Germany and the European Patent Office. Japan has such highways with the United States but also, Korea, the United Kingdom, Germany, Denmark, Finland and Russia and has announced its intention to open one with Austria on July 1 2009, Korea has a highway with Denmark in addition to those with the United States and Japan. Use of the highways has so far proved a little disappointing to the patent offices involved. Possibly this is because of the need to commence prosecution at the country at the receiving end of the highway with claims that may already have been limited during prosecution in the country of first filing and perceived differences in the approach to patentability in different countries leading to fears that claims granted by use of the highway may be narrower than might be secured by ordinary examination. If the highways do in fact speed up prosecution, however, these fears may be overcome, at least in cases where no limitation of the original claims was required in the country of origin.
In another pilot program, the USPTO and the Japanese Patent Office are cooperating on what is called the “New Route” for patent prosecution under which is similar to PCT except that WIPO is not involved. An application filed under the New Route procedure in one country is deemed to be an effective application in both and the patent office of the country in which an application is first filed undertakes the initial examination and publication of the application, with the applicant being given up to thirty months to effect entry into the other patent office and bring the results of that examination to the patent office of the other country as if it were an international search report or international preliminary report on patentability issued under PCT.[44]
Under the a further experimental project, the Triway pilot project, each of the USPTO, EPO and Japanese Patent Office conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results from each of the Offices are then shared among the Offices in order to reduce the search and examination.
Conclusion
Despite the pessimism that exists about ever achieving the goal of a global patent first suggested over 130 years ago, the last half century has in fact seen many real steps forward in making patent laws more similar and therefore more hospitable to international trade than could have been imagined in 1950. The problems now being encountered are not new. Every country has a different perspective depending on its state of economic development, the United States was not shy to discriminate against foreigners in the early stages of its industrialization and Germany and Japan did not permit patent protection for chemicals until the final third of the twentieth century. Nevertheless, over time a consensus has developed on many issues, which are now effectively "harmonized" in most countries. Indeed there is a case to be made for saying that permitting individual countries some flexibility for experiment in face permits the best ultimate norm to be adopted for such harmonization.
