By Brendan S. Lillis, originally published in Buffalo Law Journal on 12/31/15.
Globalization and harmonization of intellectual property
Companies that conduct business across international borders have long dealt with significant costs associated with apprising themselves of the varying laws of a multitude of jurisdictions.
For U.S. corporations worrying about the protection and enforcement of their intellectual property rights on a worldwide scale, this lack of consistency and uniform enforceability has been a significant concern for years. Fortunately, representatives from the U.S. have been working with various governing organizations in an effort to standardize many intellectual property laws across jurisdictions.
In October, 12 Pacific Rim countries including the United States reached an accord on the content of a new free-trade agreement, the Trans-Pacific Partnership (TPP). While the scope of the TPP covers a wide range of economic activities and sectors, there is a large section focused on homogenizing rules related to intellectual property and ecommerce.
For example, there are extensive patent provisions in the TPP directed to areas such as ensuring availability of patent protection for inventions in all fields of technology, requiring a one-year grace period for applicant-disclosed prior art, authorizing mandatory publication of patent applications after 18 months, guaranteeing public access to the file history of a patent and providing rules directed to patent term adjustment.
Some further areas of the proposed TPP intellectual property rules include setting minimum standards of law for the exclusivity periods for biologics, pharmaceuticals and agricultural chemicals; for copyright protection; and for the enforcement of copyright piracy, trademark counterfeiting and trade secret theft.
Many such proposals are in line with existing U.S. law and are seen as welcome improvements by companies seeking protection of their brands and products throughout the TPP nations.
Focusing on the realm of patents over the last several years, representatives from the patent offices of the U.S., Europe, Japan, China and Korea (collectively the IP5) have come together and enacted a number of initiatives focused on improving efficiency across the member offices.
Early work resulted in the release of the Common Citation Document, which is a resource allowing the public to quickly view the prior art cited by any of the IP5 offices for a family of patent applications. Since then, three working groups have been tasked with improving the areas of document classification, patent information and work-sharing.
The classification working group continued previous efforts by the U.S. and Europe, leading to the release of the Cooperative Patent Classification (CPC) scheme. For years, U.S. and European teams collaborated to develop this common system for classifying patent applications.
The CPC combines many of the best aspects from the older U.S. and European structures into a new system better suited to handle the increasing volume and complexity of today’s patent filings. It’s now used by at least 15 patent offices around the world.
The work sharing group gave us the Common Application Format, a standard utility patent template that is now guaranteed to be accepted at all of the IP5 offices. Further, the Patent Prosecution Highway (PPH) program allows applicants that have successfully prosecuted patent applications to issuance in one of a number of other countries to receive accelerated “fast-track” examination in the United States and elsewhere.
In November, thanks to the work of the patent information group, the U.S. Patent and Trademark Office went live with the Global Dossier, an online repository providing the public with access to the file histories of related patent applications from any of the IP5 offices, all in one place.
This database will make it easier for applicants, practitioners and examiners to access this information. Additionally, it is anticipated that this common portal will eventually ease the current burden on applicants in the U.S. of submitting prior art cited during foreign patent prosecution in an information disclosure statement in the corresponding U.S. application.
For applicants filing for patents in Europe, the current system allows for the prosecution and acquisition of a single European patent, but that European patent is then “nationalized” in a specific designated member country. In effect, the patent is still subject to the varying laws and court systems of each country in which the applicant wishes to enforce it.
However, progress is currently being made toward a single system, known as the European patent with unitary effect, which will also be incorporated with a centralized, unified patent court. In summary, there will be one set of rules for all of Europe even after issuance of the patent.
Another welcome development of the European system is the release of an updated Espacenet website, which provides a patent search tool with a database containing over 90 million worldwide patent documents, and also offers a free machine translation tool that will translate any of its patent documents into 31 different languages.
The above examples just begin to scratch the surface of a plethora of worldwide initiatives directed toward IP harmonization.
It is believed that such efforts will help lead to efficiencies, cost-reductions and streamlined communications for both the public and private sectors — a welcome development for companies and patent attorneys with global patent portfolios.