Recent Discussions relating to the International Patent System Tomoko Miyamoto Head, Patent Law Section Patent Division WIPO 2nd WIPO Seminar on IP and Creative SMEs in the Digital Environment, May 18, 2009

2 Looking into the future of the international patent system Patent system should effectively serve the public interest (both right holders and society) Fundamental features Credible –Timely grant and improved quality/validity of patents Functional –Rational use of resources –Improved access to patent system, including access to patent information (costs) Acceptable –Accommodate different economic and social conditions and interests, without foreclosing further development

3 Global IP Environment International Patent System EconomicPolitical LegalTechnological International patent system affected by changes in various aspects surrounding the system

4 Recognition of the patent system in the broader policy arena Patent policy has been recognized as integral part of national trade, economic development, public health, science and research policies –New technology and new economic reality may provoke new policy debates biotechnology and ethics –Transition to knowledge-based, global economy Consequently: –Increasing number of international fora –Enlarged participation in policy discussions –Coordination necessary both nationally and internationally

5 Global IP Environment International Patent System EconomicPolitical LegalTechnological Increasing demand Increasing tension International cooperation

6 Treaties in the field of patents administered by WIPO

7 Patent Law Treaty (PLT) Entered into force on April 28, Contracting States Streamlines and simplifies formal requirements for national and regional patent applications and patents (ex. filing date requirement) –In general, a maximum set of requirements that Offices may apply –Model International Forms Request form, Change in name or address, Change in applicant or owner, power of attorney etc. –Avoidance of unintentional loss of rights Extension of time limit/Continued processing Restoration of rights

8 Further international cooperation (1) Formality requirements largely harmonized by: –the PCT (international applications) –the PLT (national applications) Rapid growth of patent applications filed in foreign countries (Globalization vs. Territoriality) –applicants: expanding demand; costs; legal uncertainty –patent offices: duplication of work; resources Better platform for international cooperation Ensure validity of patents (quality) Bringing together core operational concepts relevant for patent examination (definition of prior art, grace period, novelty, inventive step)

9 Patent Applications Worldwide (1) Average annual application growth = 5.3%; Average annual world trade growth = 7.2% 1,764, ,208

10 Patent Applications Worldwide (2)

11 Further international cooperation (2) Post-TRIPS Agreement –TRIPS Agreement: Comprehensive coverage, including enforcement, with substantive provisions –Concerns about public policy implications Economic development and public policy flexibility; Preventing abuse/misuse of patents –ensure existing public policy flexibility –Exceptions from patentable subject matter and limitations to the rights, transfer of technology, anti- competitive practices, sufficiency of disclosure, disclosure of origin of genetic resources/TK

12 Standing Committee on the Law of Patents (SCP) Member States committee (IGOs and NGOs: observers) Working towards the establishment of the work program Report on the International Patent System –Economic rationale of the patent system and its role in innovation and technology dissemination –Legal and organizational aspects –Issues particularly relevant to broader policy considerations and development concerns

13 SCP [ Preliminary studies –Exceptions from patentable subject matter and limitations to the rights –Dissemination of patent information –Patents and standards –Client-(patent) attorney privilege –Transfer of technology (to be prepared) –Opposition systems (to be prepared)

14 Patents and Standards Common objectives = encourage innovation diffusion of technology Potential tensions Patent hold-up (implementation of standards blocked by essential patent holders) Transaction cost (accumulated royalty cost) Measures applied/suggested Patent policies of standard-setting organizations (SSOs) patent disclosure and licensing commitment Patent pools Competition law Compulsory license

15 Client–(patent) attorney privilege Confidentiality of communication between a lawyer and his client (not to be revealed in court or to a third party) free and frank communication between a lawyer and his client –Common law tradition (discovery privilege) –Civil law tradition (no discovery professional secrecy obligation) Communication between an IP advisor and his client privileged? Lack of uniform laws causes clients to lose confidentiality in advice from IP advisors at the international level Privilege applicable to IP advisors? –Non-lawyer IP advisors? Registered/unregistered advisors? In- house advisors? –Foreign IP advisors? International recognition through –Reciprocity? Unilateral recognition of foreign privilege? National treatment? Minimum standards for national laws?

16 Thank you