Transcript Treaty Obligations Pertaining to Patentable Utility

TM
SM
Treaty Obligations Pertaining
to Patentable Utility
Jay A. Erstling
Comparative Intellectual Property Law Symposium
April 4, 2012
© 2012 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Overview
Harmonization in a global economy
Treaties & international agreements
Paris Convention
PCT
PLT
TRIPS
NAFTA
What does it all mean?
2
April 4, 2012
Harmonization in a Global Economy
Pursuing patent protection in multiple jurisdictions is increasingly common
Upward trend in total patent families since 1994
Number of foreign-origin patent families more than doubled from 1985 to
2008
Filings by residents: US (49.4%), EPO (49.3%) and Canada (12.8%)
Approximately 164,300 PCT applications were filed in 2010
• 1978-2004 to reach one million PCT applications in total
• 2004-2011 to reach two million
“Harmonization” sometimes a dirty word but increasingly desired by many
patent stakeholders to increase efficiency and quality while reducing costs
and delay
3
April 4, 2012
Paris Convention
1883
Administered by WIPO
174 contracting parties, including US, the countries of Europe and Canada
Creates priority right
Focus on national treatment
Requires that each contracting state grant the same protections to
nationals of other contracting states as it grants to its own nationals
Does not specifically address “utility”
4
April 4, 2012
Patent Cooperation Treaty
1978
Administered by WIPO
144 contracting parties (i.e., member countries)
Created to provide applicants with a user-friendly, cost-effective and efficient
system for filing international patent application
Addresses “industrial applicability”
Considered to be synonymous with “utility”
Specific, substantial and credible utility
5
April 4, 2012
Patent Cooperation Treaty
Sets forth harmonizing requirements for international applications
International application has the same legal effect as a national
application in each member country
International application then subject to same national law and
requirements as a national application filed in that country
Article 27(1) prohibits member countries from imposing form and contents
requirements different from or in addition to those of the PCT on the
international application; form and contents mean:
Physical requirements and identification data
Form and manner of describing and claiming
6
April 4, 2012
Patent Cooperation Treaty
Utility
Rule 5.1 of the Regulations:
• Indicate explicitly, when it is not obvious from the description or
nature of the invention, the way in which the invention is capable of
exploitation in industry and the way in which it can be made and
used, or, if it can only be used, the way in which it can be used
Sole exception: sequence listing required for nucleotide and/or amino acid
sequence disclosures (Rule 5.2)
If a member country requires evidence of utility in a particular form, it may
only oblige the applicant to furnish that evidence during prosecution in the
national phase
Contracting states can prescribe substantive conditions on patentability,
but cannot do so in a way that constitutes requirements as to application
form and contents
7
April 4, 2012
Patent Law Treaty
2000
Administered by WIPO
US and Canada have signed but not ratified; many EPO countries are
member states (32 contracting parties in all)
Extends PCT form and contents requirements to all patent applications, not
just international applications
Prohibits member countries from demanding compliance with any form
and content requirement other than those of the PCT
Limits member country patent office authority to require applicants to file
evidence only where that office may reasonably doubt the veracity of that
matter
8
April 4, 2012
Agreement on Trade-Related Aspects of Intellectual
Property Rights – TRIPS
1994
US, Europe and Canada are obligated (153 WTO members in total)
Non-discrimination is a core goal
Technological field of an invention
Place of creation
Locally produced or imported
Provides flexibilities
Compulsory licensing of pharmaceuticals
But does not permit differential treatment in treatment of patent
applications
9
April 4, 2012
TRIPS
Doha Declaration
2001 (and Decision of the General Council of 2003)
Developing countries concerned about overly narrow reading of TRIPS by
developed countries
Reaffirmed flexibility of member states with respect to patent rights in
order to provide better access to essential medicines
Decisions of the WTO dispute resolution bodies have held members to high
standards of compliance
Recent efforts by WTO, WIPO and WHO to balance interests of developing
and industrialized countries
10
April 4, 2012
NAFTA
1992
US, Canada and Mexico
Very similar to TRIPS with respect to patents and intellectual property
11
April 4, 2012
What does it all mean?
Form and contents requirements are distinct from substantive requirements
PCT member countries cannot impose additional form and contents
requirements
Also cannot impose substantive requirements that, in effect, impose
additional form and contents requirements
Substantive requirements that relate to content of foreign-origin priority
document can have the effect of discriminating against foreign-origin patent
applications
Patent systems should not be manipulated to implement policy
Policy issues should be addressed transparently
12
April 4, 2012
Questions?
Jay A. Erstling
Patterson Thuente IP
612.349.5740
[email protected]
13
April 4, 2012
William Mitchell College of Law
651.290.7533
[email protected]