Group B+ Draft Patent Harmonisation Treaty Emerges

By William New and Tove Iren S. Gerhardsen
The wealthy members of the World Intellectual Property Organization (WIPO) have created a draft patent harmonisation treaty to be negotiated outside WIPO in the hope of removing basic differences in national and regional practices. But while the countries say they have the momentum and political will to change their laws, the draft text obtained by Intellectual Property Watch shows that substantive differences remain.

The draft patent treaty text, drawn up by the United Kingdom, and based on several pre-existing documents, shows there is substantial work left to do to bring the so-called Group B+ members to accord. The group follows WIPO structure, where developed nations act collectively as Group B, plus additional countries represented at the European Patent Office.

Draft treaty text available here

Developed countries account for the majority of the world’s intellectual property, and all in the room during the September meeting on the eve of the WIPO General Assembly expressed solid support for proceeding on the basis of the chair’s draft (IPW, Patent Policy, 6 November 2006).

The ultimate goal appears to be to catalyse the stalled harmonisation talks at WIPO in the Standing Committee on the Law of Patents. The chair was reported as saying in September, “We are working in Working Group B+ to get to a position where we can bring this back to WIPO.”

The new text is really less of a draft treaty than a discussion document at this stage, and is referred to as the “chair’s proposal.” It contains the preliminary text plus notes on each section.

The negotiation is on a fast track and will be discussed at the 20-21 November Group B+ meeting in Tokyo, according to the September report. A key earlier document from which it draws is the draft WIPO Substantive Patent Law Treaty.

A key difference is that the new draft calls for a provision on adoption of the “first inventor to file” principle, with a number of possible conditions. First-to-file most notably is not the practice in the United States, which raised concerns about it in the September meeting though there is a push to change the rule in the United States.

The draft text also contains sections on prior art (“all information which has been made available to the public anywhere in the world in any form”); availability to the public; prior art not affecting patentability (grace period) and the right of prior user; conditions for patentability; items of prior art; assessment of novelty; and assessment of inventive step/non-obviousness.

According to the September meeting report, the European Union flagged concerns with provisions on “secret prior art” (with the content of the secret prior art defined as the content of the application at the filing date), and “anti-self-collision” (under which only one patent may be granted on competing applications from the same person).

The draft appears to retain the rule for grace period, though it is not used in the same form by Europe.

In September, Australia cited concern about the harmonising of “prior use of rights.” Canada said it had some difficulty with some unspecified provisions.

William New may be reached at wnew@ip-watch.ch. Tove Iren S. Gerhardsen may be reached at tgerhardsen@ip-watch.ch.