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25 November 2015PatentsJohn Alty

An update on patent harmonisation from Group B+

Group B+ members have agreed to step up their work in the area of patent harmonisation. The group, which comprises intellectual property representatives from more than 40 countries and intergovernmental organisations, was established to promote and facilitate global patent reform issues. It meets annually in the margins of the World Intellectual Property Organization (WIPO) General Assembly, and I have had the honour of chairing the group since 2011.

Harmonisation of patent legislation in different countries has always been a key focus of the group, which recognises the significant costs and risks to innovation and growth associated with a fragmented international framework. As businesses increasingly operate internationally, the need to adjust applications and behaviour to suit the particular features of each jurisdiction not only increases costs, but also increases the risk of errors due to unfamiliarity with different systems. This can potentially limit or even destroy the chances of obtaining a patent in some jurisdictions.

Third parties working in a particular field may also be affected, finding it difficult to determine the boundaries in which they are free to operate. Furthermore, offices turning to work-sharing with other offices to reduce duplication and help increase quality and efficiency will find the usefulness of doing so limited if their examiners are working to different conventions.

For these reasons, patent law harmonisation has long been a goal of patent offices across the world, but the road to a unified system has been less than smooth.

In many ways harmonisation of patent law is the most difficult area to make progress in. It requires every participant to be prepared to change their domestic law, handle domestic stakeholders, navigate through parliaments and so forth.

Recent attempts to agree a package of changes have struggled in the face of these challenges. But business is becoming ever more global and it is unacceptable that national jurisdictions should not attempt to address the problems we are creating by maintaining unnecessarily complex and divergent systems.

“Business is becoming ever more global and it is unacceptable that national jurisdictions should not attempt to address the problem.”

It was a significant step forward when the US recently decided to change its system from ‘first to invent’ to a ‘first inventor to file’, thus aligning it more closely to the rest of the world. Over the last few years we’ve seen renewed impetus in Group B+ to work towards changes which could make things easier for businesses and offices.

This renewed impetus goes back to 2011, when seven members of Group B+ from Europe, Japan and the US formed the Tegernsee Group and committed to conducting fact-finding studies into four key patent harmonisation topics—grace period, publication of applications, treatment of conflicting applications, and prior user rights. The “ Tegernsee Final Consolidated Report” was published in 2014, summarising and analysing the results of user consultations in Europe, Japan and the US on these topics.

Following this fact-finding exercise, Group B+ formed a separate sub-group to support me as chair in taking forward work on patent harmonisation. The sub-group agreed to develop objectives and principles which it believed should guide the approach to harmonisation in key areas—the four Tegernsee topics plus prior art— and published them in June. By taking this approach, we hoped that efforts would be focused on what would be best for global innovation as a whole, rather than historical national preferences.

At its meeting in October, Group B+ committed to build on the progress of the sub-group and continue working towards concrete outcomes. As well as endorsing the work of the sub-group so far, the group agreed to the formation of separate work streams chaired by representatives from the sub-group to further explore grace period, conflicting applications, and prior user rights, and to begin investigating options for implementation. The sub-group will meet again in May 2016 to discuss the output from the work streams and discuss next steps for presentation to the Group B+ plenary in 2016.

Group B+ has also demonstrated that it recognises the importance of user input into proposals. Industry groups from Europe, Japan and the US have been developing proposals of their own, and were invited to the recent Group B+ meeting to present the results of their work. So far they have ended up in a broadly similar place as the sub-group, outlining the practices which they believe will best support innovation and competition, and reaching agreement on some key points relating to grace period, publication of applications and prior user rights on a package basis.

Group B+ isn’t the only forum in which these issues have been discussed. The recently concluded Trans-Pacific Partnership includes provisions relating to the grace period and publication of applications, which Group B+ will need to bear in mind.

However, users believe patent harmonisation should be addressed as a package consistent across major patenting jurisdictions—something which can only be achieved multilaterally. Therefore, Group B+ remains the ideal forum for patent harmonisation discussions, and still has important work to do.

John Alty is chief executive of the  UK Intellectual Property Office. He can be contacted at: john.alty@ipo.gov.uk or you can follow him on Twitter  @JohnAlty1

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