Patent Harmonization: Substantive Patent Law Treaty (SPLT) aspect

1. Patent Harmonization: Substantive Patent Law Treaty (SPLT) aspect Kay Konishi, Patents Committee APAA Japan Group APAA 50th Council Meeting October 25, 2004, Fukuoka

2. Contents • What’s SPLT in light of Patent Harmonization? • Current Draft Articles of SPLT • Current Status of SPLT • Issues Concerned • Possible Impact of SPLT Adoption in Asian Countries

3. What’s the SPLT in light of Patent Harmonization?- Conceptual View of Patent Harmonization development - Claims Specification Drawings Patent in Country A Claims A Specification A Drawings Filed in Home Country Patent in Country B Claims B Specification B Drawings Different P.A./Patentability/Prosecutions Patent in Country C Claims C Specification C Drawings Phase I: PCT

4. What’s the SPLT in light of Patent Harmonization?- Conceptual View of Patent Harmonization development - Claims Specification Drawings Patent in Country A Claims Specification Drawings Filed in Home Country Patent in Country B Claims Specification Drawings Same P.A./Patentability/Prosecutions Patent in Country C Claims Specification Drawings Phase II: SPLT

5. What’s the SPLT in light of Patent Harmonization?- Conceptual View of Patent Harmonization development - Claims Specification Drawings Filed in Home Country Patent for all countries Claims Specification Drawings One P.A./Patentability/Prosecution Phase III: Centralized Patents

6. Current Draft Articles of SPLT <Before Grant/ After Grant> -Article 1:Abbreviated Expressions -Article 2: General Principles and Exceptions -Article 3:Application of the Treaty -Article 4:Right to Patent (including First-to-file issue) -Article 5: Application -Article 6: Unity of Invention -Article 7: Observations, Amendments or Corrections of Application -Article 7bis: Amendments or Corrections of Patents -Article 8: Prior Art (including prior art effect of prior-filed later-published application) -Article 9: Information Not Affecting Patentability (Grace Period) -

7. Current Draft Articles of SPLT <Before Grant/ After Grant> -Article 10: Enabling Disclosure -Article 11: Claims -Article 12: Conditions of Patentability (Patent Eligibility, Industrial Applicability, Novelty and Inventive Step) -Article 13: Grounds for Refusal of a Claimed Invention -Article 14: Grounds for Invalidation or Revocation of a Claim or a Patent -Article 15: Judicial Review -Article 16: Evidence

8. development in the SPLT discussion in WIPO prior to current SCP 10th session • 1978Patent Cooperation Treaty (PCT) came into effect • 1982 AIPPI General Assembly adopted the resolution on International Grace Period • WIPO starts diplomatic negotiations on Patent Law Treaty (PLT) • 1991 PLT Basic Proposal submitted in Hague Diplomatic Conference • Further negotiation stopped due to U.S. breakaway • 1994 WTO GATT Uruguay Round TRIPS(Trade-Related Intellectual Property Rights) agreement • 2000PLT adopted. (Limited to Patent Formalities Harmonization) • 2001First draft (by International Bureau of WIPO) of Substantive Patent Law Treaty (SPLT)) submitted to WIPO Standing Committee on the Law of Patents (SCP))

9. Current Status of SPLT 2003 Originally scheduled WIPO SCP was cancelled due to strong opposition regarding the requirement on indication of the source and geographical origin of genetic resource/ traditional knowledge, while other member countries are seeking for reduced package (SPLT1/1st package) of SPLT current draft.

10. Issues Concerned #1(Genetic Resources) • The inclusion of the provision for protecting • the genetic resources into the current draft SPLT. • Description requirement (indication of source and • geographical origin of the genetic resources) • General exception excluding genetic resource • originated invention • - Industrial Applicability

11. Issues Concerned #2 (Prior Art Definition) SPLT (SCP/10/4) Art.8 (1) “ The prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form [, as prescribed in the Regulations, ] before the priority date of the claimed invention.” SPLT (SCP/10/5) Rule 8 (2) “ Information shall be deemed to be made available to the public, if there is a reasonable possibility that it could be accessed by the public. The reasonable possibility that information could be accessed by the public shall be considered to exist if it is possible for the public to gain access to the content of the information and to acquire possession of that contents.”

12. Issues Concerned #2 (Prior Art Definition) -“Reasonable Accessibility” standard should be required beyond the access possibility? -“Public Use” in foreign country (cf. 102(a),(b) in U.S.)

13. Issues Concerned #2 (Prior Art Definition) IF the current draft is adopted… - The member states should treat all kind of oral/written information available to the public anywhere in the world as a prior art.

14. Issues Concerned #3 (Prior-Filed Later-Published Application) SPLT (SCP/10/4) Art.8 (2)(a) “ The following subject matter in another application (“the other application”) shall also form part of the prior art for the purpose of determining the novelty of a claimed invention, provided that the other application or the patent granted thereon is made available to the public subsequently by the Office [, as prescribed in the Regulations]: i). If the filing date of the other application is prior to the priority date of the claimed invention, the whole contents of the other application;…. PCT application (only after entering into national phase?) ii). SPLT (SCP/10/5) Rule 9 [(3) [Anti-Self-Collision] Article 8(2) and paragraphs (1) and (2) shall not apply when the applicant in respect of, or the inventor identified in, the other application and the applicant in respect of, or the inventor identified in, the application under examination, are, at the filing date of the application under examination, one and the same person, provided that only one patent may be validly granted with effect for a Contracting Party for the same claimed invention.]

15. Issues Concerned #3 (Prior-Filed Later-Published Application) PCT application (only after entering into national phase?) US is favor for: Novelty+Obviousness destroying purpose Anti-self collision provision Europe is favor for: Novelty destroying purpose only NO anti-self collision provision

16. Issues Concerned #3 (Prior-Filed Later-Published Application) If IF the current draft is adopted… - The prior-filed later-published application is a prior art for the novelty purpose only (not for the inventive-step) - U.S. has to waive the Hilmar Doctrine. - Even if the inventors/applicants are the same between the prior application and the later application, the prior application constitutes the prior art which bars the later application. (No anti-self collision provision)

17. Issues Concerned #4 (Grace Period) SPLT Art.9(1): “An item of prior art with respect to a claimed invention shall not affect the patentability of that claimed invention, in so far as that item was included in the prior art on a date during the [12] [six] months preceding the prior date of the claimed invention, i). by the inventor, ii). by an Office and the item of prior art was contained (a) in another application filed by the inventor [and should not have been made available to the public by the Office], or (b)in an application filed without the knowledge or consent of the inventor by a third party which obtained the information contained in the item of prior art directly or indirectly form the inventor, or iii). by a third party which obtained the information contained in the item of prior art directly or indirectly from the inventor. ii). SPLT Art. 9 (2) [Invoking Grace Period] Alternative A/B Introduction of Grace Period 12/6 month GP from disclosure to priority date (NOT local filing date) iii). SPLT Art. 9 (4) [Third Party Right] Alternative A/B

18. Issues Concerned #4 (Grace Period) Introduction of Grace Period ? 12/6 month GP from disclosure to priority date (NOT local filing date)

19. Issues Concerned #4 (Grace Period) US is favor for GP because… For patentee: -Necessary in case of public testing, seeking for financial support -Necessary for small inventors and universities For 3rd parties: -Access to early disclosure of the invention

20. Issues Concerned #4 (Grace Period) Europe is not favor for GP because of legal uncertainty… For patentee: -Risk that 3rd party’s early disclosure/filing before the applicant’s filing prevents the applicant’s filing from patenting For 3rd parties: -Undue burden of surveillance of waiting time for practicing the invention

21. Issues Concerned #4 (Grace Period) IF the current draft is adopted… The member countries should have a grace period during the 12 months preceding the priority date (NOT local filing date) of the invention. Many member countries should enlarge the scope of the grace period to include all kinds of the disclosure by the inventor/applicant such as commercial use.

22. Possible Impact of SPLT Adoption in Asian Countries (Prior Art Def.) Advantages are: No diversity in the prior art references with respect to the corresponding foreign patent applications. No explicit disadvantages.

23. Possible Impact of SPLT Adoption in Asian Countries (Prior-filed Later-published Application) Advantages are: - The prior-filed later-published application constitutes the inventive-step destroying prior art references, if the current SPLT draft is changed to comply with U.S. type provision. No more care for the Hilmar Doctrine in U.S.

24. Possible Impact of SPLT Adoption in Asian Countries (Prior-filed Later-published Application) Disadvantages are: - -No explicit provision for prohibiting double patenting. -         -The novelty standard will be enlarged to be uniformed. -No anti-self collision provision causes rejections due to the prior application filed by the same inventor/applicant.

25. Possible Impact of SPLT Adoption in Asian Countries (Grace Period) Advantages are: -  -Activities are free from obtaining patents for seeking for the investor/technology transfer destination prior to the filing patent application. -Early disclosure available for the third parties.

26. Possible Impact of SPLT Adoption in Asian Countries (Grace Period) • Disadvantages are: • Risk that the third party’s disclosure/filing application • bars obtaining patents for the applicants. • -Excessive surveillance burden for the third parties.

27. Possible Impact of SPLT Adoption in Asian Countries (Others.) • Unity of Invention, Inventive step/Obviousness • standard issues… • Current situation is considerable diversity. • Advantages are: • - Much predictable to protect the invention worldwide • if the Inventive step/Obviousness standard is unified. • -Much easier to file foreign application corresponding to • the domestic application, if the Unity of Invention standard • is unified.

28. Conclusion • SPLT adoption is beneficial for both developing countries • and developed countries. • Detailed advantages are: • Improvement in predictability for obtaining patents of the • invention in other countries, in view of both patent eligibility • and novelty/inventive-step. • -   -Cost reduction for worldwide patent protection. • -    -Shortening of the duration for obtaining patent, resulting • in a long term exclusive right. • -No care for the lab note to establish the invention date • prior to the actual filing date, so long as the SPLT employs • First-to-file system.

29. Thank you for your attention! Kay Konishi Konishi@miyoshipat.co.jp