CASRIP Newsletter - Spring 1995, Volume 2, Issue 2
Recent Developments on the WIPO Patent Harmonization Treaty Consultative
Meeting May 8-10, 1995
A New Approach for Harmonizing National Patent Laws in Paris Union Member Countries
From May 8 through 10, 1995, the United Nation's World Intellectual Property Organization (WIPO) assembled delegates from the Paris Union member states and non-governmental organizations for a consultative meeting. The main goal of the meeting was to discuss how one should proceed with the diplomatic conference and complete the negotiations for the Patent Law Treaty. The meeting took place in Geneva, at the main building of WIPO's headquarters. More than 200 governmental and private sector delegates participated in the meeting, including Professor Chisum and myself, who represented CASRIP in an observer capacity.
There has been no significant progress under the WIPO harmonization scheme since the Stockholm revision of the Paris Convention, even though the benefits of a harmonization of substantive patent laws are clear to many Paris Union member states. Government and private sectors have negotiated over the last decade on harmonization of the substantive aspects of different patent law systems. Those efforts resulted in "the Basic Proposal" for a draft patent harmonization treaty published by the Director General of WIPO on December 21, 1990. The Basic Proposal includes many controversial substantive provisions that, for example, would require the Untied States to shift to the "first-to-file" system, as well as less controversial provisions on procedural aspects. The Basic Proposal was used as the basis for negotiation of a "Treaty Supplementing the Paris Convention as Far as patents are Concerned", at a Diplomatic Conference held in the Hague in June 1991. The negotiation was scheduled to continue at another Diplomatic Conference, but then was indefinitely postponed when the United States declined to continue with the harmonization effort. The U.S. withdrawal seemed to end forever any prospects for substantive patent harmonization. Since then, the Director General of WIPO proposed to delete the draft treaty provisions which were already discussed under GATT-TRIPs. To lure the United States back to the patent harmonization negotiation, many alternatives and possibilities of reservations have been proposed by WIPO and others, including one giving the United States a generous grace period.
The United States Position: Refusal to Support Continuation of Harmonization Discussions
Considering the U.S. withdrawal from the earlier negotiation, the presence of U.S. delegates, as well as delegates from AIPLA and ABA, at this consultative meeting was regarded as an encouraging sign, particularly since many participants at the conference had not expected to see any U.S. delegates there at all. However, following an introductory speech by the WIPO's Director General, the statement made by Mr. Goeffney, a U.S. delegate and Acting Deputy Assistant Secretary and Deputy Commissioner of Patent and Trademarks, Patent and Trademark Office, stunned everyone present in the meeting room. In essence, the U.S. delegate rejected all alternatives proposed by WIPO and suggestions prepared by non-governmental organizations and refused to set a starting date for another diplomatic conference to negotiate the patent law treaty. Acknowledging the benefits of world wide patent harmonization, the U.S. prefers to seek the benefits through bilateral and multilateral discussions. The reason for the refusal was lack of support from the U.S. public for patent harmonization. The implementation of GATT-TRIPs has already generated a storm of controversies with U.S. industries and patent professionals. The United States is, therefore, not ready to face more extensive changes to accommodate the requirements resulting from the WIPO full scale harmonization treaty, although it did not deny a possibility of joining the negotiation at some future time. The Japanese delegates broke the oppressive silence that descended in the meeting room and expressed their strong support to keep the Basic Proposal, the accomplishment of 10 years' effort, alive. Other governmental delegates supported the Japanese view and expressed their preference to go forward with full scale harmonization. Delegates from non- governmental organizations representing European and Japanese patent applicants agreed with the Japanese view but some of them also made clear their view that the U.S. must be a party in future discussions. Delegates from private organizations representing U.S. patent applicants, such as the American Intellectual Property Law Association (AIPLA) and the American Bar Association (ABA), expressed their strong interests in world wide patent harmonization but agreed with the U.S. view that this is not a good time for the U.S. to continue with the patent harmonization discussion. In emphasizing recent changes in U.S. patent law, such as the 20 year limit on patent term, reexamination and 18 month publication as well as expected changes such as the establishment of prior user's right, all of which indicate a direction toward harmonization with other patent systems in the rest of the world, those delegates asked for the audience's sympathetic understanding on the current situation in the United States.
The Director General's Proposal: More Focus on Harmonization in Formality and Procedural Aspects
As the result of the U.S.'s refusal to continue with the negotiation, it became clear that the conference must choose between moving ahead with the negotiation on the Basic Proposals without the U.S. participation or stopping the negotiation until the U.S. is ready. To keep the Basic Proposals alive while making it possible for the United States to participate in future negotiation, the WIPO's Director General proposed to remove all controversial provisions from the negotiation and limit the negotiation to harmonization of the formalities of different patent laws. The first day's meeting concluded with that proposal, which was printed and distributed to participants for further discussions at group meetings scheduled on the next morning. The proposal stated:
"The Consultative Meeting,
"[Being of the opinion that] Considering that, in the absence of consensus the basic proposal that was before the diplomatic conference in the Hague in 1991 [may no longer correspond to present day realities] and [that the] a continuation of that [diplomatic] conference [does] may either not seem to be the best approach[,] or not be opportune,
"Believing that harmonization of patent laws on a number of subjects is of the utmost benefit for patent protection of inventions,
"Recommends to the Director General of WIPO to seek decisions from the September 1995 session of the General Assembly of WIPO and the Assembly of the Paris Union on [a new] another approach for promoting harmonization, particularly of matters concerning the formalities of national and regional patent applications such as signatures, changes in names and addresses, change in ownership, correction of mistakes, observations in case of intended refusal, representation and address for service, contents of at least the request part of the application, and use of model international forms, and that two or more sessions of a committee of experts to discuss such matters should be organized by WIPO [in the next biennium,] before the September 1997 sessions of the said Assemblies,
"Is of the view that the question of having a diplomatic conference, with what agenda and when, should be considered [only once the above-mentioned committee of experts has concluded its task] in the said sessions of the said Assemblies."
(The text in brackets [ ] is deleted and the underlined text is added after further discussion.)
Brushing up Language in the Director General's Proposal: A New Approach or Another Approach
On the second day, the delegates spent the whole morning discussing whether or not to support the Director General's proposal. Some regional groups of governmental delegates as well as delegates from private organizations met to find a consensus and hash out the language in the proposal to present their views at the general meeting scheduled later in the afternoon. CASRIP delegates participated in the group meeting for non-governmental organizations. In the group meeting, all participants felt that the proposal did not accurately reflect the present situation in that the United States was merely objecting to set the date and begin the negotiation at this moment, but did not express any objection to the Basic Proposal being used in future negotiations. It was very important to select the right words to indicate the situation accurately and which are also acceptable to the U. S. delegates, who are concerned about controversy if there is a public impression that they continue to work in the same old format. Although the participation of the United States in future negotiation is essential, use of the term "a new approach" causes concerns about the shift of direction for patent harmonization from substantive aspects to formality aspects if that language in the Director General's proposal is adopted. These concerns were common to many governmental delegates. In the general meeting, the governmental delegates expressed the need to clarify the language of the proposal to indicate that the Basic Proposal is still valid but the timing for reopening the discussion is not proper at this moment. Thus, the line in the basic proposal... "may no longer correspond to present day realities" in the first paragraph was deleted. As shown by the underlined text in the above proposal, the newly adopted term clearly indicates that the continuation of the diplomatic conference, instead of the basic proposal, may either be the best approach or be inopportune. Moreover, many delegates from the European Union member states strongly resisted the wording " a new approach" because it might suggest that the Basic Proposal would no longer be valid as a basis for further negotiation and they should start the negotiation all over again. On the other hand, the adjective "new" seemed very significant to the U. S. delegates because that gave the public impression that they replaced the old approach, which had been the subject of controversy, with something new. So much is at stake on the selection of one adjective! As a result, the last 30 minutes of discussion over the Director General's suggestion were quite thrilling. After the breathtaking thrust and parry of U.S. delegates and non-U.S. delegates over the synonyms of the term "new" such as "another" "fresh" and "revised", the U.S. delegates finally agreed to adopt the term "another", instead of "new", which was accepted by all participants in the big conference room with a big applause. The substantive discussion of this consultative meeting was over at 7:00 P.M. on Tuesday, May 9. On Thursday, May 11, the revised proposal was unanimously adopted by the delegates. Many delegates, including myself, left Geneva without waiting to see the formal adoption.
Impression of Attending WIPO Harmonization Conference
As this report indicates, the intent of the delegates, hopefully including the U.S. delegates, is to freeze the 10 year efforts of the Basic Proposal until the United States is ready, rather than throwing that away. The "new" approach should be interpreted to include new discussion focusing on the formality aspects as well as reopening of the controversial provisions in the Basic Proposal when the time is ripe. However, once the proposal is published and the negotiation starts, it is possible that the language in the proposal would be interpreted differently and the direction of negotiation would develop differently. I hope that, as all delegates at the conference believe, the governmental and private sectors in the United States will work for the next few years to create a public consensus on the benefits of full scale harmonization through the bilateral and multilateral patent harmonization efforts. Overall, attending the WIPO conference is quite an experience for me. The discussion was definitely political and thus was vastly different from an academic discussion in which legal certainty and fairness play the most important role. However, for a legal scholar, knowing the present day realities is extremely helpful in considering not only theoretically sound but also politically feasible legal principles and standards for international patent harmonization.