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Harmonization of patent laws

Rajendra K. Bera

Intellectual property is already a big Treaty (SPLT) is an exploratory step in technological catch-up abilities of deve-
component of global trade and rising. this direction. loping countries in terms of social,
Consequently, the number of cross- administrative, infrastructural and other
border disputes and multiple infringe- costs due to their uneven stages of tech-
ment suits related to patents is also Tentative harmonization efforts nological advancement. This is particu-
increasing1,2. Their resolution is compli- larly true for pharmaceutical products in
cated because the scope and coverage of The Agreement on Trade Related Aspects countries lacking local manufacturing
patent protection differs from country to of Intellectual Property Rights (TRIPS) ability.
country. For example, software and busi- of 1994 is the most notable step taken Aside from TRIPS, the Patent Coope-
ness method patents are permitted in towards harmonization. It introduced in- ration Treaty, and various regional
some countries but not in others. Even tellectual property law into the interna- agreements, such as the Convention on
when patent laws are similar in two tional trading system for the first time the Grant of European Patents and the
countries, their interpretation by the and nudged signatory countries towards a African Intellectual Property Organiza-
courts can vary widely. Furthermore, level of uniformity which most are still tion are attempts to harmonize various
technologically advanced countries tend struggling to cope with. For example, art. procedural matters. They do not affect
to support strong patent protection to 1.1 leaves member states ‘free to deter- the functioning of national patent sys-
encourage further innovation, while others mine the appropriate method of imple- tems. A draft European Patent Litigation
argue that strong patent protection re- menting the provisions of this Agreement Agreement is under consideration too.
stricts access to new goods and reduces within their own legal system and prac- In 1983, the patent offices of the US,
welfare. Thus, under the principle of ter- tice’, and a November 2005 decision of Europe and Japan (Trilateral Offices),
ritoriality, the same set of facts in a patent the Council for TRIPS allowed least- which together process the vast majority
dispute can lead to conflicting judgments developed country members to postpone of patent applications filed in the world,
and arguably irreconcilable outcomes implementation of many TRIPS obliga- entered into a Trilateral Cooperation.
when adjudicated in different countries. tions until 2013. Countries can refuse to The objective: ‘Through harmonization
Consequently, the cost of acquiring, pro- patent diagnostic, surgical and therapeu- and development of industrial property
tecting and enforcing patents in multiple tic methods (art. 27(3)(a), as well as administration and protection of indu-
countries is high. those inventions that are required to pro- strial property rights, the Trilateral
National patent laws of most countries tect ordre public, morality, and human Offices strive to contribute to an
embody premises and concepts that were health (art. 27(2)). increasingly efficient worldwide patent
shaped by the Industrial Revolution; they TRIPS contains provisions that allow system in the 21st century’. Regular tri-
are ill-suited for our information-driven nations some leeway in tailoring their lateral meetings are held to discuss sets
age. Our age deals with inventions that patent system according to their domestic of representative cases and compare exa-
spring from such exotic technologies as needs, present state of development, and mination practices. Keeping in mind
nanotechnology, information technology, their potential for growth. While it lists their respective domestic laws, they iden-
biotechnology and robotics. Universities, an ‘inventive step’ as one of the requi- tify applications where the same exami-
especially in the United States, and to a rements for patentable subject matter nation standards can be applied.
modest degree in Germany, Japan and (art. 27(1)), it does not define the term. The successes and experiences gained
South Korea, are no longer bystanders Likewise, it defines scope in terms of the in the patent examination harmonization
but aggressive seekers and licensors of nature of the rights conferred (art. 28), practices in the Trilateral Cooperation
patents. These new developments plus but does not set out the breadth of the initiative have spawned a set of bilateral
the necessity to mitigate frictions gene- technological terrain a patent must cover. initiatives, generally known as the Patent
rated by the territorial nature of patent Such omissions provide space to member Prosecution Highway agreements, bet-
protection in global trade has created an states to supply their own definitions of ween patent offices of different coun-
acute need for harmonization of patent ‘inventive step’ and determine the scope tries, whereby the participating patent
laws and their enforcement. Other per- of patent protection. Subsequent to the offices share information during patent
ceived benefits include liberalized tech- trade-negotiation round of the World prosecution with the goal of reducing ex-
nology transfer and increased foreign Trade Organization which commenced in amination workload and improving the
direct investment from developed coun- November 2001 in Doha, Qatar, to lower quality of granted patents. Under the
tries to the developing and under- trade barriers around the world, generally Patent Prosecution Highway agreements,
developed countries. Ideally, harmoniza- known as the Doha Round, TRIPS per- if claims of an application have been
tion would improve the world’s capacity mits countries to issue compulsory found acceptable by a first intellectual
to innovate as a whole, which would be licenses to meet the health needs of property office (Office of First Filing),
greater than the sum from its parts. The nations unable to produce locally needed an accelerated examination can be re-
World Intellectual Property Organiza- medicines. In retrospect, the TRIPS quested at a second intellectual property
tion’s proposed Substantive Patent Law Agreement greatly underestimated the office (Office of Second Filing). Each


patent application is examined in accor- missteps could easily lock out for years ing procedures. The principles must care-
dance with the patent act and patent many states from development opportu- fully establish a boundary that will
office practice of the respective country nities, while locking in current competitive separate the regime that creates exclusive
conducting the examination. Such pilot advantages for a few developed nations. rights from one that controls monopolies.
bilateral arrangements between the The agreed-upon fundamental principles
USPTO and patent offices of Australia, must then be made difficult to amend.
Canada, Europe and South Korea were National interests vs The commercially and economically
started in 2008; and between the Japan harmonization salient specifics should be left to member
Patent Office and patent offices of UK, nations. This, in principle, can provide
Germany and Denmark were started in SPLT is futuristic. Even the US, which the desired continuity and predictability
2007–08. possesses unique institutional infrastruc- as well as the flexibility needed to res-
ture needed to build and administer a pond to economic and societal changes.
strong patent system, is struggling to TRIPS, in its present form, lacks a solid
Obstacles of harmonization revamp its national patent system. It has legislative basis for amending intellec-
completed three studies – two by the tual property law to changing needs.
Experience with the TRIPS Agreement National Academies3 and another by the To implement SPLT we propose the
shows that SPLT will need to overcome Federal Trade Commission4. In addition, creation of two world bodies: one that
many hurdles. At the very least, member it receives suggestions for change from would decide whether a patent applica-
states would have to agree upon what is scholars and judges. So far, the only tion satisfies the fundamental principles
‘patentable subject matter’, and settle point of agreement has been the need for of patentability or not, before national
upon common definitions of and articu- reform! Attempts in the last several years patent offices process it; and the other
lated standards for terms such as ‘nov- to establish a new patent act are yet to that would decide whether the fundamen-
elty’, ‘non-obviousness’ (or ‘inventive succeed. Compounding the problem are tal principles of adjudication are satisfied
step’), ‘useful invention’, ‘doctrine of the thousands of ‘silly’ patents granted or not before a case goes to a national
equivalents’, ‘infringement’, etc. They by the US Patent and Trademark Office court. Such an arrangement will provide
would also have to agree upon how much since the 1980s, which has left many greater legitimacy to national patent
a patent application must reveal about wondering about the non-obviousness office actions and judicial decisions. The
the invention, how to assign priority of standard followed by it5. These patents arrangement makes even greater sense
invention to inventors (such as the first- have jeopardized the smooth functioning when we look at developmental statistics
to-file or first-to-invent), whether inven- of market economies and overburdened of various countries and how rapidly
tors should be accorded a grace period the courts. One can only imagine how they are changing7. It is then that we
permitting public disclosure of the inven- difficult attaining SPLT would be where realize that seeking global harmonization
tion for a certain period prior to filing of non-obviousness would be only one of on all aspects of patent law is a futile
the patent application, settle on guide- the many contentious issues and the US exercise, because it will take many years
lines for research exemption, and estab- would be an important participant. before any form of consensus emerges.
lish standards for analysing infringement Reichman and Dreyfuss6 have succinctly And during those years the world would
and awarding relief. Furthermore, before summarized the larger problem: have undergone a dramatic change well
any implementation of full-scale har- beyond the predictive capabilities of any
monization occurs, infrastructure capable [T]he worldwide intellectual property econometric model.
of interpreting and amending the ‘har- system has entered a brave new scien-
tific epoch, in which experts have only 1. Sender, M. P., Cross-border Enforcement
monized’ law must be in place. This will
tentative, divergent ideas about how of Patent Rights: An Analysis of the Inter-
take many years. On the positive side,
face Between Intellectual Property and
even modest levels of harmonization can best to treat a daunting array of emerg-
Private International Law, Oxford Univer-
dramatically lower costs and make shar- ing new technologies. The existing
sity Press, 2002.
ing of information and examination pro- system has become increasingly dys- 2. Chiang, E. P., South. Econ. J., 2004, 71,
cedures among national patent offices functional because it operates with a 424–440.
substantially feasible. set of rudimentary working hypothesis 3. NRC, Reports, National Research Council,
At the implementation level, each that have not kept pace with technical USA, 2004; 2006.
member country must be able to interna- change. 4. Federal Trade Commission, Report, 2003.
lize agreed-upon intellectual property 5. Bera, R. K., Curr. Sci., 2008, 95, 1520–
standards rapidly enough without legally For SPLT to succeed, it would be neces-
6. Reichman, J. H. and Dreyfuss, R. C., Duke
discriminating against other countries, sary to first set down those fundamental
Law J., 2007, 57, 110–111.
and without disrupting its local needs for principles that will form the backbone of 7. Rosling, H., 2006;
products and services and quality of life. patent law for all member countries. index.php/talks/view/id/92
This it must achieve irrespective of its These principles, inter alia, should esta-
location, population size, economic blish definitions and minimum standards
development, history, culture, human or for statutory subject matter, novelty, Rajendra K. Bera is in the International
natural resources, R&D infrastructure, non-obviousness and utility, the level at Institute of Information Technology,
ability to provide education, public which the invention must be described 26/C, Electronics City, Hosur Road,
health, environmental safety, or its abi- and how claims must be written, the Bangalore 560 100, India.
lity to compete in the marketplace. Any scope of patent protection and adjudicat- e-mail: