Patent Law Harmonization: What Happened?

"It is not yet the time." So concluded Ron Marchant, head of the United Kingdom Patent Office, who chaired the close of the informal meeting of the Standing Committee on the Law of Patents (SCP) in Geneva on April 12. Agreeing that they could not yet agree on a work plan, Member States put on hold the discussions on a draft Substantive Patent Law Treaty (SPLT) which had started in 2001. This report recalls the background, and explains how differences in approach have made agreement on the way forward hard to find.

The SCP’s work on a draft SPLT text initially focused on harmonizing certain operational concepts relating to the examination of patent applications. Over the next couple of years the proposed contents of the text were progressively broadened. In the course of that process, some provisions, regarding, for example, patentable subject matter or the exceptions to patentability, raised concerns that flexibilities in national policies, recognized under current international treaties, could be eroded. Delegations also differed over proposals to include requirements to disclose in patent applications the origin of any genetic resources and traditional knowledge on which an inventions is based.

Attempts to move the discussions forward included proposals in 2004 from members of the so-called trilateral cooperation (Japan, the United States of America and the European Patent Office); a WIPO-led consultation meeting with delegations from 20 Member States and regional offices in Casablanca in February 2005; and proposals submitted by the "Friends of Development." But delegations were by now divided, broadly speaking, into two camps: those pressing to fast-track a limited number of technical issues; and those advocating an inclusive approach.

Limiting the scope

Delegations in the former camp held that it was necessary to harmonize patent examination standards among WIPO Members in order to improve patent quality, simplify procedures, reduce costs for users, and reduce duplication of work by patent offices. This was in the common interest of both developed and developing countries. To this end, they urged approval of a limited workplan for the SCP, in which the scope of the SPLT discussions would be confined to the definition of:

* prior art,

* grace period,

* novelty, and

* inventive step.

Agreement on these issues, the delegations reasoned, would...