Patent Harmonization: Substantive Patent Law Treaty (SPLT) aspect

Patent Harmonization: Substantive Patent Law Treaty (SPLT) aspect. Kay Konishi , Patents Committee APAA Japan Group APAA 50 th Council Meeting October 25, 2004, Fukuoka. Contents. What’s SPLT in light of Patent Harmonization? Current Draft Articles of SPLT Current Status of SPLT

Share Presentation

Embed Code

Link

Download Presentation

prior date
patentability prosecution phase iii
revocation
industrial applicability
file issue
50th council meeting october

vin

vin + Follow

Download Presentation

Patent Harmonization: Substantive Patent Law Treaty (SPLT) aspect

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

Presentation Transcript

Patent Harmonization: Substantive Patent Law Treaty (SPLT) aspect Kay Konishi, Patents Committee APAA Japan Group APAA 50th Council Meeting October 25, 2004, Fukuoka
Contents • What’s SPLT in light of Patent Harmonization? • Current Draft Articles of SPLT • Current Status of SPLT • Issues Concerned • Possible Impact of SPLT Adoption in Asian Countries
What’s the SPLT in light of Patent Harmonization?- Conceptual View of Patent Harmonization development - Claims Specification Drawings Patent in Country A Claims A Specification A Drawings Filed in Home Country Patent in Country B Claims B Specification B Drawings Different P.A./Patentability/Prosecutions Patent in Country C Claims C Specification C Drawings Phase I: PCT
What’s the SPLT in light of Patent Harmonization?- Conceptual View of Patent Harmonization development - Claims Specification Drawings Patent in Country A Claims Specification Drawings Filed in Home Country Patent in Country B Claims Specification Drawings Same P.A./Patentability/Prosecutions Patent in Country C Claims Specification Drawings Phase II: SPLT
What’s the SPLT in light of Patent Harmonization?- Conceptual View of Patent Harmonization development - Claims Specification Drawings Filed in Home Country Patent for all countries Claims Specification Drawings One P.A./Patentability/Prosecution Phase III: Centralized Patents
Current Draft Articles of SPLT-Article 1:Abbreviated Expressions -Article 2: General Principles and Exceptions -Article 3:Application of the Treaty -Article 4:Right to Patent (including First-to-file issue) -Article 5: Application -Article 6: Unity of Invention -Article 7: Observations, Amendments or Corrections of Application -Article 7bis: Amendments or Corrections of Patents -Article 8: Prior Art (including prior art effect of prior-filed later-published application) -Article 9: Information Not Affecting Patentability (Grace Period) -
Current Draft Articles of SPLT-Article 10: Enabling Disclosure -Article 11: Claims -Article 12: Conditions of Patentability (Patent Eligibility, Industrial Applicability, Novelty and Inventive Step) -Article 13: Grounds for Refusal of a Claimed Invention -Article 14: Grounds for Invalidation or Revocation of a Claim or a Patent -Article 15: Judicial Review -Article 16: Evidence
development in the SPLT discussion in WIPO prior to current SCP 10th session • 1978Patent Cooperation Treaty (PCT) came into effect • 1982 AIPPI General Assembly adopted the resolution on International Grace Period • WIPO starts diplomatic negotiations on Patent Law Treaty (PLT) • 1991 PLT Basic Proposal submitted in Hague Diplomatic Conference • Further negotiation stopped due to U.S. breakaway • 1994 WTO GATT Uruguay Round TRIPS(Trade-Related Intellectual Property Rights) agreement • 2000PLT adopted. (Limited to Patent Formalities Harmonization) • 2001First draft (by International Bureau of WIPO) of Substantive Patent Law Treaty (SPLT)) submitted to WIPO Standing Committee on the Law of Patents (SCP))
Current Status of SPLT 2003 Originally scheduled WIPO SCP was cancelled due to strong opposition regarding the requirement on indication of the source and geographical origin of genetic resource/ traditional knowledge, while other member countries are seeking for reduced package (SPLT1/1st package) of SPLT current draft.
Issues Concerned #1(Genetic Resources) • The inclusion of the provision for protecting • the genetic resources into the current draft SPLT. • Description requirement (indication of source and • geographical origin of the genetic resources) • General exception excluding genetic resource • originated invention • - Industrial Applicability
Issues Concerned #2 (Prior Art Definition) SPLT (SCP/10/4) Art.8 (1) “ The prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form [, as prescribed in the Regulations, ] before the priority date of the claimed invention.” SPLT (SCP/10/5) Rule 8 (2) “ Information shall be deemed to be made available to the public, if there is a reasonable possibility that it could be accessed by the public. The reasonable possibility that information could be accessed by the public shall be considered to exist if it is possible for the public to gain access to the content of the information and to acquire possession of that contents.”
Issues Concerned #2 (Prior Art Definition) -“Reasonable Accessibility” standard should be required beyond the access possibility? -“Public Use” in foreign country (cf. 102(a),(b) in U.S.)
Issues Concerned #2 (Prior Art Definition) IF the current draft is adopted… - The member states should treat all kind of oral/written information available to the public anywhere in the world as a prior art.
Issues Concerned #3 (Prior-Filed Later-Published Application) SPLT (SCP/10/4) Art.8 (2)(a) “ The following subject matter in another application (“the other application”) shall also form part of the prior art for the purpose of determining the novelty of a claimed invention, provided that the other application or the patent granted thereon is made available to the public subsequently by the Office [, as prescribed in the Regulations]: i). If the filing date of the other application is prior to the priority date of the claimed invention, the whole contents of the other application;…. PCT application (only after entering into national phase?) ii). SPLT (SCP/10/5) Rule 9 [(3) [Anti-Self-Collision] Article 8(2) and paragraphs (1) and (2) shall not apply when the applicant in respect of, or the inventor identified in, the other application and the applicant in respect of, or the inventor identified in, the application under examination, are, at the filing date of the application under examination, one and the same person, provided that only one patent may be validly granted with effect for a Contracting Party for the same claimed invention.]
Issues Concerned #3 (Prior-Filed Later-Published Application) PCT application (only after entering into national phase?) US is favor for: Novelty+Obviousness destroying purpose Anti-self collision provision Europe is favor for: Novelty destroying purpose only NO anti-self collision provision
Issues Concerned #3 (Prior-Filed Later-Published Application) If IF the current draft is adopted… - The prior-filed later-published application is a prior art for the novelty purpose only (not for the inventive-step) - U.S. has to waive the Hilmar Doctrine. - Even if the inventors/applicants are the same between the prior application and the later application, the prior application constitutes the prior art which bars the later application. (No anti-self collision provision)
Issues Concerned #4 (Grace Period) SPLT Art.9(1): “An item of prior art with respect to a claimed invention shall not affect the patentability of that claimed invention, in so far as that item was included in the prior art on a date during the [12] [six] months preceding the prior date of the claimed invention, i). by the inventor, ii). by an Office and the item of prior art was contained (a) in another application filed by the inventor [and should not have been made available to the public by the Office], or (b)in an application filed without the knowledge or consent of the inventor by a third party which obtained the information contained in the item of prior art directly or indirectly form the inventor, or iii). by a third party which obtained the information contained in the item of prior art directly or indirectly from the inventor. ii). SPLT Art. 9 (2) [Invoking Grace Period] Alternative A/B Introduction of Grace Period 12/6 month GP from disclosure to priority date (NOT local filing date) iii). SPLT Art. 9 (4) [Third Party Right] Alternative A/B
Issues Concerned #4 (Grace Period) Introduction of Grace Period ? 12/6 month GP from disclosure to priority date (NOT local filing date)
Issues Concerned #4 (Grace Period) US is favor for GP because… For patentee: -Necessary in case of public testing, seeking for financial support -Necessary for small inventors and universities For 3rd parties: -Access to early disclosure of the invention
Issues Concerned #4 (Grace Period) Europe is not favor for GP because of legal uncertainty… For patentee: -Risk that 3rd party’s early disclosure/filing before the applicant’s filing prevents the applicant’s filing from patenting For 3rd parties: -Undue burden of surveillance of waiting time for practicing the invention
Issues Concerned #4 (Grace Period) IF the current draft is adopted… The member countries should have a grace period during the 12 months preceding the priority date (NOT local filing date) of the invention. Many member countries should enlarge the scope of the grace period to include all kinds of the disclosure by the inventor/applicant such as commercial use.
Possible Impact of SPLT Adoption in Asian Countries (Prior Art Def.) Advantages are: No diversity in the prior art references with respect to the corresponding foreign patent applications. No explicit disadvantages.
Possible Impact of SPLT Adoption in Asian Countries (Prior-filed Later-published Application) Advantages are: - The prior-filed later-published application constitutes the inventive-step destroying prior art references, if the current SPLT draft is changed to comply with U.S. type provision. No more care for the Hilmar Doctrine in U.S.
Possible Impact of SPLT Adoption in Asian Countries (Prior-filed Later-published Application) Disadvantages are: - -No explicit provision for prohibiting double patenting. - -The novelty standard will be enlarged to be uniformed. -No anti-self collision provision causes rejections due to the prior application filed by the same inventor/applicant.
Possible Impact of SPLT Adoption in Asian Countries (Grace Period) Advantages are: - -Activities are free from obtaining patents for seeking for the investor/technology transfer destination prior to the filing patent application. -Early disclosure available for the third parties.
Possible Impact of SPLT Adoption in Asian Countries (Grace Period) • Disadvantages are: • Risk that the third party’s disclosure/filing application • bars obtaining patents for the applicants. • -Excessive surveillance burden for the third parties.
Possible Impact of SPLT Adoption in Asian Countries (Others.) • Unity of Invention, Inventive step/Obviousness • standard issues… • Current situation is considerable diversity. • Advantages are: • - Much predictable to protect the invention worldwide • if the Inventive step/Obviousness standard is unified. • -Much easier to file foreign application corresponding to • the domestic application, if the Unity of Invention standard • is unified.
Conclusion • SPLT adoption is beneficial for both developing countries • and developed countries. • Detailed advantages are: • Improvement in predictability for obtaining patents of the • invention in other countries, in view of both patent eligibility • and novelty/inventive-step. • - -Cost reduction for worldwide patent protection. • - -Shortening of the duration for obtaining patent, resulting • in a long term exclusive right. • -No care for the lab note to establish the invention date • prior to the actual filing date, so long as the SPLT employs • First-to-file system.
Thank you for your attention! Kay Konishi Konishi@miyoshipat.co.jp

Related
More by User

Hybrid cars – the value of patent strategies in innovation

Hybrid cars – the value of patent strategies in innovation. Mike Lloyd and Justin Blows, Griffith Hack. Contents. Why study hybrid car patents Evolution of hybrid cars and hybrid car patents, and the dominance of Toyota How to get around Toyota 1) – Lead user innovation

1.19k views • 32 slides

Wind Energy: Doubly-fed Induction Generator Presentation

This report presents a brief introduction to wind energy and technologies available for horizontal wind turbines. A detailed taxonomy for horizontal axis wind turbines is presented covering parts of the turbine, control systems, applications among others. A detailed landscape analysis of patent and non-patent literature is done with a focus on Doubly-fed Induction Generators (DFIG) used in the horizontal axis wind turbines for efficient power generation. The product information of major players in the market is also captured for Doubly-fed Induction Generators. The final section of the report covers the existing and future market predictions for wind energy-based power generation.

2.11k views • 25 slides

Significant Final Rule Makings of 2004

Biotech Partnership Meeting December 8, 2004. Significant Final Rule Makings of 2004. Bob Spar, Director Office of Patent Legal Administration (OPLA) (571) 272-7700 Deputy Commissioner for Patent Examination Policy (DCPEP) PatentPractice@uspto.gov. Final Rule Makings.

1.37k views • 104 slides

What is a “substantive” post?

What is a “substantive” post?. 1. with practical importance: having practical importance, value, or effect a substantive agreement 2. substantial: substantial in amount or quantity a substantive meal. Contents of Bible books. Introduction to Biblical Literature. Historical books. 17 books

1.4k views • 43 slides

Patent Prosecution at the USPTO: Tips and Recent Developments

Patent Prosecution at the USPTO: Tips and Recent Developments. Kathleen Kahler Fonda Legal Advisor, Office of Patent Legal Administration Loyola Law School Los Angeles March 10, 2009. Overview. Examiner's view of a patent application Tips for filing and prosecuting a patent application

1.11k views • 63 slides

Moroccan American Peace Treaty 1786-1836

Moroccan American Peace Treaty 1786-1836. The Peace Treaty as a Cultural Document By Zakaria RMIDI. OUTLINE. Introduction The Peace Treaty Development Reading of The Peace Treaty 3.1. Articles dealing with war 3.2. Articles dealing with vessels & shipping

1.86k views • 17 slides

27 Sept. 2000

Implementation Perspective of the USPTO on the “American Inventors Protection Act of 1999” (P.L. 106-113); and the changes to implement the Patent Business Goals. Bob Spar, Director / Karin Tyson, Senior Legal Advisor Office of Patent Legal Administration, USPTO

1.82k views • 162 slides

QPAT The Global Patent Domain Wageningen UR & Plant Research International

Questel•Orbit. QPAT The Global Patent Domain Wageningen UR & Plant Research International. Training. Login Screen www.qpat.com. Help Menu. French login screen. Secure login, Change password and Direct access on Patent Copy Order. Introduction in the Contens of the Databases .

1.15k views • 96 slides

Venue Selection in Patent Cases After In re Volkswagen

Austin Intellectual Property Law Association February 16 Meeting and Luncheon CLE Austin, Texas February 16, 2010. Venue Selection in Patent Cases After In re Volkswagen. Michael C. Smith Siebman, Burg, Phillips & Smith, LLP Marshall, Texas michaelsmith@siebman.com www.EDTexweblog.com.

933 views • 83 slides

Wilson and the Treaty of Versailles

Wilson and the Treaty of Versailles. Lecture 4 . It was the strength of the opposition forces , both liberal and conservative , rather than the ineptitude and stubbornness of President Wilson that led to the Senate defeat of the Treaty of Versailles.

1.56k views • 90 slides

The America Invents Act: Modernizing U.S. Patent Law February 7 and 8, 2013

The America Invents Act: Modernizing U.S. Patent Law February 7 and 8, 2013. Goals of America Invents Act. Encourage innovation and job creation Support USPTO’s efforts to improve patent quality and reduce backlog Establish secure funding mechanism

1.46k views • 103 slides

United States Patent Law and Polymorphs

United States Patent Law and Polymorphs. Overview of Presentation. Overview of U.S. Patent Law What is a patent? What is required to get a patent? Why are polymorphs patentable? Infringement of Patents Cases relating to polymorphs District court’s decision in SB v. Apotex

1.12k views • 70 slides

AIA Trial Roundtables

AIA Trial Roundtables. Welcome. Agenda. Roundtable Materials. Available at: http://www.uspto.gov/ip/boards/bpai/ptab_aia_trial_roundtables_2014.jsp. PTAB Presentation. Overview. AIA Trials Statistics Lessons Learned Administrative Patent Judges PTAB Website Tour.

115 views • 0 slides

Master of Intellectual Property Law Introduction to the European Patent Convention

Master of Intellectual Property Law Introduction to the European Patent Convention. Outline. Introduction to European Patent Law Fundamentals of European Claim Drafting and interpretation Opposition and Appeal. Introduction to European Patent Law. Part I.

1.51k views • 136 slides

IPC in PATENTSCOPE

IPC in PATENTSCOPE. August 2013. Sandrine Ammann Marketing & Communications Officer. Today. Focus on the IPC in the PATENTSCOPE search system: Presentation of the IPC IPC in action Q & A session. What is IPC?. International Patent Classification

1.23k views • 100 slides

MODIFLOW

MODIFLOW. A FLOW MODIFICATION DEVICE. CONTENTS. Asthma and other respiratory illnesses Inhalable medications Forms of delivery to the lungs Spacer devices Fractal geometry Fractality in living systems Turbulence How do the biological systems deal with it? ModiFlow The Patent CIP

959 views • 80 slides

Patents: The Patent Cooperation Treaty (PCT) at the center of the International Patent System

Patents: The Patent Cooperation Treaty (PCT) at the center of the International Patent System. PCT Outreach Activities: South Africa February 5 to 8, 2007.

1.13k views • 60 slides

Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03

Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03. Bob Spar Director Office of Patent Legal Administration (OPLA) (703) 308-5107, Bob.Spar@USPTO.gov. TOPICS. Recent Rule Making/ Notices: Image File Wrapper (IFW) – Final Rule

1.17k views • 98 slides

Bruce H. Stoner, Jr. – Former Chief Judge, USPTO Board of Patent Appeals and Interferences

Proposed New Rules in US Patent and Trademark Office , and Related Prosecution/Negotiation/Litigation Strategies. Bruce H. Stoner, Jr. – Former Chief Judge, USPTO Board of Patent Appeals and Interferences Bruce H. Bernstein – Senior Partner Greenblum & Bernstein, P.L.C. November 2006.

1.07k views • 89 slides

Significant Final Rule Makings of 2004

1.29k views • 104 slides

Prosecution History Estoppel

Prosecution History Estoppel. Prof Merges Patent Law – 4.14.08. U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd. 505 F.3d 1371 (Fed Cir 2007). Issues. Notice -- U.S.C. § 287(a).

1.1k views • 86 slides