1

1. To what extent would it be desirable to have a global patent system?

Introduction:

The patent system is the key to dispersion and transfer of technology

by providing a limited monopoly for a period of 20 years. Thus in the patent
system the monopoly grated to the inventor is like a bait which is offered by
the society so that the inventor may be induced by the rights and there by add
his new found invention to the public domain. They also help promote in
stimulating innovation and investment. A patent in principle can be said as a
creature of territorial vigour only, as a patent gives protection only within the
territorial limit of that country. 1This may prove to be a problem in some
circumstances when there is a cross filing of the duplicate of the same patent
in different countries, in 1965 there has been a total of 650,000 patents filed
and the major problem is that half of those patent applications were the
duplicates of the original filing made somewhere else. 2 Many measures have
been taken in order to stop this from happening the Patent Co-operation
treaty is one of them, which has a view to harmonise the patent system across
the world.

Problems of patent system not being harmonious:

A patent system which is not harmonious throughout the world defeats

the ultimate goal. To promote innovation the inventor must be given the true
price for his invention rather than some other person filing another patent
application elsewhere in the world and getting credit for his original work. The
difference in patent law around the world is always a problem for the inventors
as different countries have different requirements for patentability as a result
the inventor is put to a lot of hardship in getting his invention patented in all
the countries.3 There is also another problem which is the cost of the patent
application the cost for acquiring patents is too high that only multinational
1
Brian C Reid. ‘A Practical guide to patent Law’, (Sweet & Maxwell 2nd ed., London 1993)
2
Harvey Winter, ‘Our International Patent Policy and the world Patent crisis’ Department of
State Bulletin 54 (1966): 1006 - 1008.
3
Joseph Straus, Nina-Sophie Klunker, 'Harmonisation of international patent law',
International Review of Intellectual Property and Competition Law, (2007)
 2

corporations can afford that much in order to acquire worldwide patent

protection. In the current patent regime apart from the fact that the inventor is
supposed to go to each and every patent office in the world which asks for
different requirements he also has to bear the cost of patenting in every
country which may seem like a further burden for the inventor. This may even
reduce the level of innovation. At the conference of the International
Symposium on reducing Patent Costs by the Charted Institute of Patent
Agents (CIPA) and the American Intellectual Property law association
(AIPLA), one of the senior patent counsels of the world’s major research
based pharmaceutical companies estimated that the cost of acquiring
worldwide patent protection for a chemical compound in the year 1997 was
between 750,000 to 1,000,000, he also said that this figure is increasing at the
rate of 10 percent each year. 4 in 1996 since the cost of acquiring the patents
is very high here was a cost cut which has been undertaken by many patent
offices around the world.5

The former head of the U.S. Patent and Trade Mark Office, Q. Todd
Dickinson has said that it is a generally accepted postulate that there is a
need for a global patent system but for sorting through the diversity of the
existing system and current proposal for the policy makers is limited, but to
achieve the nature of a global patent system that should be created. 6 The
Developing countries were not ready to accept the doctrine which was put
forth by the Sustentative Patent Law Treaty. The Industrialist nations focused
on the technical and legal issues of patent law, but the developing nations
failed to accept the same until there is technical character involved. The
Developing nations had an argument on their side that there must be some
provisions that allow for developed patent law. In China and India they tried to
adapt the mediation proceeding.

One of the Major reasons for harmonisation of the patent laws is to

stop the unwanted duplicates of the same original application filed elsewhere.
4
International Symposium on reducing Patent Costs conference by (CIPA) and the (AIPLA),
London, England (March 11-12, 1997)
5
European Patnt Office reduces fee by DEM 140,000,000 million per year, Munich 9 Dec.
1996 EPO Public Relations release.
6
Hon. Q Todd Dickinson, The Long-term International View of Patents and Trademarks, in
International Intellectual Property Law and Policy (Hugh C. Hansen ed. 2000).
 3

This leads to many problems like the patent offices having a large backlog of
patent application. Also the quality of the patents granted may be put to
hardship and the examinations may not be done and the search of prior art
may not be done properly. Even with the introduction of the Patent co-
operation treaty which helped a little in this regard to harmonise the patent law
among all of its member states, there have been some problems. The result
given out of the search for prior art and the examination of the patent are not
accepted by most of the nationals except if the patent office is an (ISA)
International search authority and the (IPEA) International preliminary
examination authority.

There are a number of reasons why the consideration for the PCT
search and examination is not widely accepted. Some of them that there is
not a clear definition to what constituted prior art and also there is insufficient
harmonisation of patent laws. It does not have a common standard which
makes it reliable to put all the time and money into it. There is always a certain
level of unwillingness among the patent offices in considering the search and
examination conducted by another patent office. The language also stands as
a barrier for the patent offices for example the U.S patent office may not
understand the Japanese patent office’s report and vice versa. If these issues
are resolved then there is a fair chance that this could be the beginning of the
harmonisation of the patent laws around the world. A proper definition of what
constitutes prior art is very much needed for this treaty to unleash its full
potential.

Measures taken to achieve a global patent system:

The most important and the oldest of the international agreements is

the Paris Union Convention which was made in Paris on 20 March 1883, it
was also subject to many amendments. 7 The following are the amendments
that were made to the Paris Union Convention Rome (1886), Madrid (1890),
Brussels (1900), Washington (1911), The Hague (1925), London (1934),
Lisbon (1958) and Stockholm (1967). Some of the most important provisions
in the Paris Union Conventions are such as; no compulsory licenses will be

7
"Interna-tional Patent Cooperation," Stanford Law Review 20: 1000
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granted within three years of non use of the patent filing date, No patent
revocation may be allowed within two years after compulsory patents are
available, Each of the patent system may be available to the nationals of the
other signators of the agreement, a period of one year may be given to the
inventor from the date of the original filing to file cross-applications in other
countries.

The Patent Co-operation Treaty is one of the most important treaties that
supplement the Paris Union Convention. The important development in the
PCT (Patent Co-operation Treaty) is the provision that a single application
may be made for any or all the member countries and the search for the
requirement of prior art will be conducted worldwide in one of the international
research offices and the report of the search will be sent to all the patent
offices mentioned in the application, at a later point of time the issues that
affect the patentability factors will be looked into. The PCT has a total of 111
contracting states as of 17 April 2001. In 2000 there have been a total of over
90,000 patent applications which have been filed for a PCT application. 8 The
provisions of the PCT have been proven to be useful as nearly 80% of the
applications filed asked for the optional “preliminary” examination provided by
the PCT. The PCT search is done by the (ISA) International search authority
and the examination is done by the (IPEA) International preliminary
examination authority.
The World intellectual Property Organisation (WIPO) in the year 1985
started its work on a Treaty with an intention of harmonising the patent laws of
all the signatory states and to supplement the Paris. 9 The reason that this was
started is because WIPO had a desire in order to reintroduce the provision of
the grace period and in some countries introduce the provision and to define it
consistently around the world.10 This original approach was later extended and
ended in an attempt to harmonise the major parts of the patent law. The result
of the repeated negotiations is the Basic Proposal, which was submitted at the
Diplomatic Conference held at Hague in June 1991. 11 This Draft also

8
Markus Nolff, ‘TRIPS, PCT and Global Patent Procurement’, JPTOS, July 2001.
9
BARDEHLE, 1998 GRUR 182 et seq
10
PAGENBERG, 1990 GRUR Int. 267 et seq.
11
WIPO Document PLT/DC/3, Basic Proposal for the Treaty and the Regulations.
 5

contained the substantial patent law provisions like the first to file, grace
period, patentability requirements etc. The WIPO Committee of experts said
that it was apparent that in order to achieve harmonious patent system the
two major industrial powers must achieve a balance packaged deal, in such a
way that the U.S.A accepts the first to file system and the European Union
accepts the grace period provision.12
The Americans expected some concession in return for abandoning
the first to invent system which was deeply rooted in the American soil;
Europe was equally convinced that the grace period provision was the perfect
concession for their change to first to file from the first to invent system. Some
of the Scandinavian countries and other European countries did not accept
the provision of the grace period, this put the harmonisation at risk and it was
confirmed that this was not going to work out when America in the year 1994,
said that they would not switch from their first to invent policy and so it was
concluded that without the U.S. as the powerful industrialised country a treaty
could not be finalised.13 The U.S delegation successfully concluded the TRIPS
Agreement, which helped in successful settlement of a number of disputed
issues in the Patent Law Treaties. 14 The WIPO director general proposed a
slightly modified draft of the Patent Law Treaty which was limited to
procedural and formal issues; as a result this was adapted by the WIPO and
the Paris Convention General assembly in September 1995. The WIPO
committee of experts negotiated this for five year and a conference was held
at Geneva on 1 June 2000 where it was adapted in the Patent law Treaty
which came into effect on 28 April 2005.15

The Standing Committee on the law of patents (SCP) in 2001 took up

the discussion of the harmonisation of substantial patent law in order for an
international patent law treaty. The draft of the Substantive Patent law treaty

12
CORREA & MUSUNGU, “The WIPO Patent Agenda: The Risks for Developing Countries”
15 (South Centre Working Papers, November 2002).
13
BEIER & SCHRICKER, “From GATT to TRIPs – The Agreement on Trade-Related Aspects
of Intellectual Property Rights” 160
14
WIPO Document PLT/CM/4, at 3, 4.
15
Patent Law Treaty, Regulations under the Patent Law Treaty and Agreed Statements by the
Diplomatic Conference, adopted on 1 June 2000 (WIPO Document PT/DC/47 dated 2 June
2000);
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(SPLT) was at the starting stage as negotiations were going on as there were
conflicts between the developing nations and the industrialised countries. And
among the industrialised countries the discussions were on the “different
views concerning the modality of the consultations, namely which are the
questions that had to be discussed in which WIPO committee and generally
the criticism that the level of protection would become too high nevertheless
prevented the conclusion of the treaty after five years of discussions.” 3

Because of the conflict that had happened between the member states
of the WIPO, it was not so easy to conclude this treaty. The Developing
countries were not ready to accept this treaty unless and until it is favourable
to them and to innovation, but the industrialised countries were focused only
on the issue of harmonisation of technical and legal issues of patent laws. 16
China and India attempted to overcome this problem by attempting to adapt a
mediation proceeding, but it was not of much use as they failed to overcome
the existing difference. It was not accepted by the developing countries that
there must be harmonisation in the technical and legal issues alone but also
they should contain development policy issues which may favour the filing of a
number of patent applications. The Developing countries saw that there was a
need to create a proposal to the Standing Committee on the law of patents
and so the group of developing nations which was headed by Brazil and
Argentina submitted nine proposed topics for the course of consultation with
the SCP. They submitted some of the requirements and adding to those they
also said that the “compulsory disclosure of the origin of genetic resources
and prior informed consent combines with the provision on benefit-sharing is
not the only part of the discussion by also that there should be examination of
effective mechanisms to challenge the validity of patents, sufficiency of
disclosure, technology transfer and alternative models to promote
innovation.”17 These requirements were in conflict with the industrialised
countries like the USA, Japan and the Europe wanted to restrict the
discussions to the definition of prior art, the question of novelty and the grace

16
WIPO Document SCP/11/5;
17
STRAUS, “The Impact of the New World Order on Economic Development: The Role of the
Intellectual Property Rights System”, 6 J. Marshall Rev. Intell. Prop. L. 1 et seq., 4 (2007).
 7

period, as well as the assessment of inventive step/non-obviousness. 18 In

April 2006, at the unofficial meeting of the SCP the USA and Japan submitted
another proposal for rapid harmonisation of the four important provisions in
their list. The Industrialised countries were off the opinion that all of the nine
proposals of the developing nation could be fulfilled or even discussed at the
Patent Law Committee as part of the harmonisation treaty. From the list of the
nine which was proposed some were of a general nature and they were not
discussed in detail at any of the WIPO forum. The major object of this was to
create a few conditions in order to deal with the problems in the patent office’s
like the large amount of patent applications that has been filed in the patent
offices and the quality of the patents issued and the large amount of backlogs
of the patent applications in the patent offices. 3 The lack of the agreement was
not only because of the attitude of the developing countries but also of the
industrialised countries who would not go loose on their criteria.

The Agreement on TRIPS (Trade Related Intellectual Property Rights)

was concluded in 1994 lays down the rights in patent law and the rights
thereof but fails to give out requirements for patentability instead it leaves the
details regarding the patentability requirement to be set by the individual
member states.19 The TRIPS agreement requires the following
“Patents must be available, subject to certain exceptions, for any
inventions; in all fields of technology, provided that they are new, involve an
inventive step (non-obvious) and are capable of industrial application” 20
“An effective patent procurement as to permit a grant within a
reasonable time according to reasonable procedures and formalities” 21
“A patent must confer certain enumerated exclusive patent rights” 22
“”Availability of an effective enforcement mechanism for such patent
rights”23

18
USA, Japan and the European Patent Office submitted to the 31st Session of the General
Assembly of the WIPO in September 2004, WIPO document WO/GA/34/9
19
STRAUS, “Implications of the TRIPS Agreement in the Field of Patent Law”
20
TRIPS Article 27 (1)
21
TRIPS Article 62 (1)
22
TRIPS Article 28 (1)
23
TRIPS Article 41
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“Disputes arising out of TRIPS are to be settled according to the WTO

dispute settlement procedure.”24
The TRIPS Agreement does not give out a procedure in order to acquire a
patent the only assistance that is given by TRIPS is to provide information of
his corresponding foreign application of the WTO members.

Patent Laws around the world:

There has been a welcoming response from many countries but some
of the other countries who do not want this global patent system are opposing
for this system. There have been other inter-American conventions which
follow the same principles of the Paris Convention like the Convention of
Montevideo which was signed in the year 1889, the Convention of Caracas
which was signed in the year 1911, the Convention of Buenos Aires which
was signed in the year 1910, some of the members of these conventions are
members of the Paris convention also. 25 There have been many changes in
many countries for example there have been many congressional and
presidential proposals in the U.S in order to modify the patent system, like the
changes proposed in 1912, 1941, 1943, and 1966. 26 The U.K. has also
followed a similar pattern by appointing committees and there by amending
their laws. the changes that were made are the Fry Committee report which
gave its report in 1901 was followed by the 1907 act, the Sargent report which
gave its report in 1931 was followed by the 1932 act, the Swan committee
which gave its report in 1947 was followed by the 1949 act and the Banks
committee which gave its report in 1970 still is a debatable issue. 27 the first act
in India was passed in 1856 which was repealed the following year, later it
passed another act in 1859 followed by the act of 1872 which was followed by
the present law of 1911 which is in force it was revised in 1952 and
subsequently followed by the new act in 1962.28
24
TRIPS Article 64
25
Mark S. Massel, 'The International Patent System' Journal of Economic Issues, Vol. 7, No. 4
(Dec., 1973), pp. 645-664
26
Mark S. Massel, "The Patent System and Economic Development," New York University
Law Review 46 (1971)
27
Geoffrey W. Tookey, "The British Patent System: A Survey of the Principal
Recommendations of the Banks Committee," International Review of Industrial Property and
Copyright Law 2 (1971): 117
28
S. Vedaraman, "The New Indian Patents Law," International Review of Industrial Property
and Copyright Law 3 (1972): 39.
 9

A committee called the Nordic committee was established for the grant
of a Nordic patent which would cover Denmark, Finland, Norway, and
Sweden, one of the objectives of this is to harmonise the patent system
around the world.29 Likewise the European patent office would undertake all
the necessary examinations and would grant patents for any or all the
countries in the European Union that is mentioned in the patent application. 30
In the year 1962 the African and Malagasy Industrial Property Office was
established with a total of twelve members and subsequently a thirteenth
member was included, this office served as a patent office for all of the
member countries and the treaty also provides for uniform national laws. 31 All
of these changes are in the national level and they are all aiming for a single
patent system and unification of laws and elimination of patent barriers. The
developing countries are well advised to formulate the patent laws for their
own rather than waiting for a global reform, so that they may be able to avoid
the restriction of the use on patents. After the implementation of the TRIPS
agreement there has been quiet some changes in the economy of many
countries. A significant change has been seen in the economy of India and
China.

Conclusion:

The Patent laws of the Twenty first century may be harmonised if the
policy makers balance the values between harmony and cacophony. Global
Patent System is not so easy for the developing countries it is plainly like a
great loss of freedom to determine patent protection levels with regard to the
economic development.32 The WIPO Organisations may be a little bit slow as
it has to pay attention to all of its members, the phase of development of the
treaties done by WIPO is so slow that it may not even be realised. 33 The PCT
is one of the successful steps taken towards harmonisation; if this search and
examination was accepted by all the 111 member states then the PCT may be
29
United Nations, The Role of Patents in the Transfer of Technology to Developing Countries
(New York: 1964)
30
Ibid.
31
Ludwig Baeumer, "Importance of Industrial Property Protection in Developing Countries"
(New York: United Nations Industrial Develop-ment Organization, 27 April 1972, mimeo)
32
Christopher Heath, 'Harmonisation of international patent law? - a reply to Straus and
Klunker' International Review of Intellectual Property and Competition Law, (2008)
33
Michael N. Meller, ‘Planning for a global patent system’ June 1998.
 10

improved to achieve the long awaited concept of a global patent system. The
three major Industrialised countries must first strike a deal before the idea of
the global patent system can be realised.

Bibliography:

 Brian C Reid. ‘A Practical guide to patent Law’, (Sweet & Maxwell 2nd ed.,
London 1993)
 Harvey Winter, ‘Our International Patent Policy and the world Patent
crisis’ Department of State Bulletin 54 (1966): 1006 – 1008
 Geoffrey W. Tookey, "The British Patent System: A Survey of the
Principal Recommendations of the Banks Committee," International
Review of Industrial Property and Copyright Law 2 (1971): 117
 Joseph Straus, Nina-Sophie Klunker, 'Harmonisation of international
patent law', International Review of Intellectual Property and
Competition Law, (2007)
 International Symposium on reducing Patent Costs conference by
(CIPA) and the (AIPLA), London, England (March 11-12, 1997)
 Christopher Heath, 'Harmonisation of international patent law? - a reply
to Straus and Klunker' International Review of Intellectual Property and
Competition Law, (2008)
 European Patnt Office reduces fee by DEM 140,000,000 million per
year, Munich 9 Dec. 1996 EPO Public Relations release
 Michael N. Meller, ‘Planning for a global patent system’ June 1998.
 Hon. Q Todd Dickinson, The Long-term International View of Patents
and Trademarks, in International Intellectual Property Law and Policy
(Hugh C. Hansen ed. 2000)
 "Interna-tional Patent Cooperation," Stanford Law Review 20: 1000
 Mark S. Massel, "The Patent System and Economic Development,"
New York University Law Review 46 (1971)
 United Nations, The Role of Patents in the Transfer of Technology to
Developing Countries (New York: 1964)
 11

 Ludwig Baeumer, "Importance of Industrial Property Protection in

Developing Countries" (New York: United Nations Industrial Develop-
ment Organization, 27 April 1972, mimeo)
 S. Vedaraman, "The New Indian Patents Law," International Review of
Industrial Property and Copyright Law 3 (1972): 39
 Markus Nolff, ‘TRIPS, PCT and Global Patent Procurement’, JPTOS,
July 2001.
 BARDEHLE, 1998 GRUR 182 et seq
 Mark S. Massel, 'The International Patent System' Journal of Economic
Issues, Vol. 7, No. 4 (Dec., 1973), pp. 645-664
 PAGENBERG, 1990 GRUR Int. 267 et seq.
 WIPO Document PLT/DC/3, Basic Proposal for the Treaty and the
Regulations.
 CORREA & MUSUNGU, “The WIPO Patent Agenda: The Risks for
Developing Countries” 15 (South Centre Working Papers, November
2002).
 STRAUS, “Implications of the TRIPS Agreement in the Field of Patent
Law”
 BEIER & SCHRICKER, “From GATT to TRIPs – The Agreement on
Trade-Related Aspects of Intellectual Property Rights” 160
 STRAUS, “The Impact of the New World Order on Economic
Development: The Role of the
Intellectual Property Rights System”, 6 J. Marshall Rev. Intell. Prop. L.
1 et seq., 4 (2007).