Member States Begin Talks on Shaping aFuture Global Patent System

Geneva, November 13, 2000
Press Updates UPD/2000/114

In a historical first step to create the basis for a more predictable and cost-effective international patent system, member states of the World Intellectual Property Organization (WIPO) launched discussions on harmonizing the substantive requirements of patent law. Negotiators attending a meeting of the Standing Committee on the Law of Patents (SCP), which met from November 6 to10, 2000, agreed to consider harmonizing a number of basic legal principles that underpin the grant of patent in different countries of the world. Representatives from 70 WIPO member states, six international organizations and 13 non-governmental organizations attended the meeting.

Patent laws and practices vary widely throughout the world. The consequence of such divergences is that in certain countries a patent application may lead to the grant of a patent, whereas in others, a patent may not be granted for the same invention, or the patent may be invalidated after grant.

The need for further harmonization beyond the Patent Law Treaty (PLT), concluded in June 2000, arises from the fact that the PLT harmonizes only patent procedures relating to national and regional patent applications and maintenance of patents. In addition, although the Patent Cooperation Treaty (PCT) contains some principles of substantive patent law applicable to the international phase of an application submitted under the PCT, PCT contracting states are free to apply any substantive conditions of patentability during the national phase of an international application. This is the stage at which national authorities decide whether or not to grant a patent.

SCP members agreed that the harmonization of the different patent systems was a pre-requisite to reducing the costs of obtaining international patent protection In the first instance, they agreed to focus discussions on six basic legal principles that determine whether a given invention qualifies for patent protection, namely, definitions of prior art, novelty, inventive step (non-obviousness) and industrial applicability (utility); sufficiency of disclosure; and the structure and interpretation of claims. In a second step, at the future meeting of the SCP in November 2001, SCP members will return to such issues as first-to-file versus first-to-invent, 18-month publication of applications (in a country without an early publication system, an applicant would be unaware of earlier applications for identical or similar inventions and might, therefore, duplicate research and development as well as patent filings leading to unnecessary costs) or post-grant opposition (when patents are erroneously granted for an invention that was not patentable).

The advantages of harmonizing substantive patent laws include:

• reduction in direct costs resulting from the need to prepare totally different patent documents for different patent offices;
• increased predictability in the process of obtaining and using patents in different countries
• reduce the unpredictable risk of losing patent rights;
• facilitation of mutual recognition of search and examination results between patent offices. This will avoid duplication of work, reduce the workload of patent offices and eventually lower the costs of patenting for the benefit of users.

The next meeting of the Standing Committee on the Law of Patents (SCP) will be held in May 2001. Copies of SCP meeting documents are available from the WIPO website: https://www.wipo.int/activities.

For further information, please contact the Media Relations and Public Affairs Section at WIPO:

• Tel: (+41 22) - 338 81 61 or 338 95 47
• Fax: (+41 22) - 338 88 10
• Email: publicinf@wipo.int.