History
Patent law is a public policy instrument to encourage innovation. It has been employed over hundreds of years by many countries. Each country historically imposed its own rules, restrictions and processes around patent law, and operated its law in isolation. This was very problematic for early inventors, and the likes of Colt, Watt and Edison famously spent large sums of money to protect their inventions outside their home countries. As is the case today, significant inventions were not confined to the country of the inventor – they have international application, and the inventors therefore require protection throughout many different countries.
The Paris Convention of 1883 established some minimum requirements on signatories. Each country agreed to provide a right of priority to applications filed in other member countries, provided they were filed within a year of the first application. Another important requirement imposed by the treaty is national treatment – nationals and residents of member countries must be treated by the national laws no less favourably than nationals of that country.
The Paris convention has been expanded and updated several times, and other agreements have governed areas such as formal requirements for patent applications (Patent Law Treaty), a common filing and preliminary search and examination process (Patents Co-operation Treaty), and deposits of micro-organisms to support patent applications (Budapest Treaty). Over the years, more and more countries have joined these agreements, so that the major agreements are operative in over 140 countries, including all developed countries and major emerging economies such as China, India, Brazil, and Indonesia.
Even more significantly, an intellectual property agreement, TRIPS, is a key component of the international trade system established and regulated by the World Trade Organisation. This allows countries to use the dispute provisions of the WTO when IP standards are not being honoured, and this has been used on several occasions.
In parallel, there has been a gradual trend towards national laws being amended so as to reduce unnecessary differences. Recent major amendments in the United States and Australia are illustrative of this trend. Hence, the core features of patent legislation are not greatly different between most countries, particularly developed countries, and most of the formal requirements can be met in most cases by following appropriate common standards. This also applies to emerging economies such as China, Indonesia, Thailand, and Malaysia.
Further substantive patent law harmonisation at the international level has been slow, but there are recent signs of progress.
So where is the problem?
‘Black letter’ patent law being harmonised is important, and carries great advantages for technology developers. However, the law is administered by a patent office in each country, which examines and grants patents. Patents are enforced by courts, which apply the law through the filter of their own national constitution, other fundamental laws, and underlying practices and principles.
As I will explain in more detail below, even if the same laws are in place and the same patent application is filed, completely different practical outcomes in different countries will be achieved if the administrative authorities operate different rules and practices. Similarly, if the courts apply different approaches to interpreting and enforcing patents, then even the same law and the same patent will produce different outcomes.
Patent Examination
In the past, each country has conducted its own search, examination and grant processes, in isolation from all other patent offices. A patent filed in 10 countries will be examined on similar grounds by 10 different Examiners, and this is a waste of resources. This is hugely inefficient on any objective analysis. This is particularly the case for the search component of examination, where often the same search is repeated in each country. While different patent offices will search somewhat differently – for example, the Japanese Examiner will often search Japanese material better than anyone else – there is a large degree of duplication. On the other hand, even where law appears similar, patent examination can be very different. It is not uncommon for the same patent have few objections which are readily overcome in one country, and have significant difficulties in another, based on the same prior document.
A form of harmonisation is taking place at many levels to improve co-operation between patent offices and remove duplication. One approach is a regional patent office, which examines for all the countries in a region, at least when the applicant decides to use that path. This exists in Europe, as the European Patent Office (EPO) and in parts of Africa.
Another form is the increased co-operation between patent offices, particularly in sharing their Examiners’ work. There are even proposals to have the Examiners from different countries discuss a particular invention which has been applied for in both countries, in some circumstances. The largest patent offices – the United States, China, European Patent Office, Japan, and South Korea - have all invested large resources in working to allow recognition and understanding of each other’s work products. This ranges from making translations of their national filings available in search databases, to working groups of Examiners examining the same applications and comparing the results. This is likely to eventually bear significant fruit.
The resources at stake are considerable - for example, the USPTO employs over 6,800 Patent Examiners, and has 644,387 applications (as at April 2012) that it has not yet examined. The statistics of the other large offices are similar in dimension. The economic drivers for improvement and co-operation are clear.
Despite some regional success with the EPO, there are many political barriers to any formal, legal recognition system for granting patents. However, from hearing speakers from all of the major patent offices over the past year, it is clear that they are all moving to recognise each other’s work, which in turn will tend to remove unnecessary differences in practice and approach between the different patent granting authorities. This is a project which all the large patent offices see as essential. The advantages for an Australian applicant are that this should reduce the cost of obtaining international protection.
The Courts
In the final analysis, the value of a patent is the ability to enforce it against an infringer. The underlying court processes of each country differ considerably, and this inevitably affects the enforceability of a patent in each territory. I am not referring here to patent law as such, but to issues such as the availability and quantum of damages, the availability of injunctions pending trial and final injunctions afterwards, the ability to compel the production of documents and witnesses, the time to reach a decision and the cost of proceedings. These are all matters of carefully protected national sovereignty, and not likely to change in a hurry.
Within the specific scope of patent law, one of the best examples is the Remington lady shaver case. This was a granted European Patent, with identical claims and (in principle) harmonised law in each country, and an identical infringing product. However, enforcement of European patents is a national activity. Out of seven cases in different countries, three went in favour of the infringer, four in favour of the patentee. This illustrates the complexity of practical harmonisation. Unless the patents are interpreted in the same way, differences will persist in outcomes even in a system of common administrative processes and closely harmonised law.
Judges in different countries who try patent cases do hold conferences, talk to each other, and reference each other’s judgements. There is a lot more scope for judge made harmonisation, but it is as yet embryonic.
Conclusion
From the perspective of the patent owner, in an ideal world, one authority would grant patents which would be granted internationally, and enforced internationally at a single court. This is not going to happen any time soon.
Gradual measures to harmonise the law, and remove formal and procedural differences between jurisdictions, have been occurring and are likely to continue. Patent offices are working together more than ever, with improved tools and a new determination from the administrators in each country. Judges are also talking to each other and this can only help to achieve improved consistency and understanding.
However, a grand, complete harmonisation is nowhere on the horizon. Improvements will come, but don’t hold your breath.
The only practical strategic approach is to try and draft patents to ensure that the specific requirements of the target countries are all considered in preparing the specification.
by Peter Franke
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