Prepared by: Ronak Karanpuria LL.M. 2nd Trimester I.D. No. 534 Under the Supervision of Prof. T.

Ramakrishna

Represents an attempt to pursue a deep harmonization of both the law and practice concerning not just the drafting, filing, and examination of patent applications, but also the cornerstone requirements of patentability.
SPLT negotiations cover three separate legal documents: the draft Treaty (i.e. the SPLT), the draft Regulations under the SPLT and the draft Practical Guidelines

HARMONISATION PROCESS 1. To establish a uniform set of substantive standards 2. Applicability both to national and regional laws & practice, and to the international framework under the PCT

REASON: Dividing Line b/w formality requirement & substantive requirement is not clear which give rise to thriving counterfeit & piracy trade

1. 2. 3. 4. 5. 6. 7. 8.

Unification of Patent Law Simplify and streamline procedures Reduce costs for applicants Enable Offices and Authorities to meet workload and maintain quality Avoid duplication of work among Offices Meet needs of large, medium and small Offices Balance applicant and third party interests Assist developing countries, especially with IT Interface b/w PCT & PLT

SPLT A.3 : Contracting Party shall apply the provisions of this Treaty and the Regulations: (i) to national applications (ii) to regional applications (iii) to international applications (iv) to patents which have been granted with effect for that Contracting Party. (2) [Exceptions] This Treaty and the Regulations shall not apply to the applications and patents that are prescribed in the Regulations.

Rule 3: Exceptions Under Article 3(2) The applications and patents referred to in Article 3(2) are: (i) subject to Article 1(ii), provisional applications (ii) applications for reissue.

1. Prior Art [A.8(1)] 2. Novelty [A.12(2)] 3. Grace Period [A.9(1)] 4. Inventive Steps [A.12(3)] 5. Sufficient disclosures [A.10] 6. First to file, early publication 7. Interface b/w PCT & PLT 8. Invalidation of claim or patent (A.14) SPLT does not cover post grant phase left to national laws

DANGERS OF HARMONISATION PROCESS

1. Safeguarding public interest flexibility - IDEAL SYSTEM 2. Transfer of technology A.66 & A. 67 of TRIPS 3. Curbing anti-competitive practices, and 4. Exporting a Dysfunctional system - Narrow meaning - To pull up ladder and stop others joining them 5. Disclosure disharmony - Person skilled in art varies with sectors & skills in the country of application -According to the need of technical field & nature of invention -Disclosure of the origin of genetic resources in patent applications. 6. Exclusion from patentability many ideas are filtered out by SPLT -difficult to define what is technical -EPC patent are not given for business method, contrary to SPLT 7. Industrial application varies different countries patent rejection 8. Business interest are different

Paris Convention
National treatment, right of priority & common rules

European Patent Convention

Centralized filing, examination & granting procedures even harmonized many substantive patent law like after grant protection but limited to European member state

Patent Cooperation treaty (PCT)

Centralized filling & a common preliminary examination procedure for 120 contracting states or International application.

Patent Law Treaty (PLT)

Harmonize formal requirements set for national process

Substantive Patent Law Treaty (SPLT)

Substantive harmonization of patent law Harmonizing concept of novelty, inventive step & utility

#1 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Prior Art
SPLT (SCP/10/4) Art.8 (1) The prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form [, as prescribed in the Regulations, ] before the priority date of the claimed invention.

SPLT (SCP/10/5) Rule 8 (2) Information shall be deemed to be made available to the public, if there is a reasonable possibility that it could be accessed by the public. The reasonable possibility that information could be accessed by the public shall be considered to exist if it is possible for the public to gain access to the content of the information & to acquire possession of that contents.
The term prior art has not been defined - Indian Patents Act, it shall be determined by the provisions of sec- 13 read with the provisions of sec- 29 to 34 of the Act. Advantage of SPLT: 1. Instances Frivolous patents get reduced beneficial for India eg. Neem 2. Removal of Hilmer Doctrine : According to this doctrine the application will have the prior art effect on the date of filing in US only. TRIPS is silent on the issue of Prior Art

Questions
Q1. What does availability to the public mean? If a reasonable possibility to access the information is enough to qualify the information as being prior art, how is the term reasonable possibility interpreted?

Q2. What does the public mean? Could it be only one person? Is it a person skilled in the art or could it be any person? Q3. (1)Whether information disclosed on the Internet constituted prior art? (2)Is the ability to search [the web page] by search engine relevant to the determination of availability/accessibility of Internet disclosures? (3)What would be the sufficient duration on internet that would constitute prior art? (4)Whether e-mails could constitute prior art? Q4 Whether the secret prior art or disclosure in pending application will be considered as prior art for assessing inventive step or not?
Q5 While assessing even the novelty some country consider the whole content of the prior application (US, EPO, Japan)and some just compare the claims of later to the claims of earlier to check if the claims are coterminous (India)?

IF the current draft is adopted - The member states should treat all kind of oral/written information available to the public anywhere in the world as a prior art. - No restrictions of geographical location - No time limit is stipulated for documents or other source of information. - Harmonisation would eliminate the flexibilities that patent offices in individual countries have been exercising while examining patent claims

#1 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Prior Art
A.8(2) SPLT [Prior Art Effect of Certain Applications] (a) The following subject matter in another application (the other application) Shall also form part of the prior art for the purpose of determining the novelty of a claimed invention, provided that the other application or the patent granted thereon is made available to the public subsequently by the Office [, as prescribed in the Regulations]: --------SECRET PRIOR ART OR FICTIONAL PRIOR ART------------ Draft SPLT A.8(2) relates to the prior art effect of earlier-filed applications as there could be no justification for the automatic prior art effect of International patent applications in the absence of a single patent grant covering all PCT contracting states. It was argued that the effect would be damaging to industry. A patentee would be able to invalidate later-filed patents dated prior to publication of the PCT application in over one hundred countries, even if he had no intention of proceeding in those countries.

Questions
What are the contents of the earlier application which should be considered?

What should be the effect of such an earlier application?

What date should be considered as the date of forming prior art of an earlier application? Does the origin of the earlier application play a role? Does it make a difference if the earlier application was not made by a third party?

#2 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Novelty
SPLT Art. 12 (2) [Novelty] A claimed invention shall be novel. It shall be considered novel if it does not form part of the prior art[, as prescribed in the Regulations] SPLT Regulations SCP/10/3 Rule 14: Any item of prior art relevant to the determination of lack of novelty (i)may only be taken into account individually and may not be combined with other items of prior art, TRIPS is silent on the issue of Novelty
Q.1 Simple novelty is not sufficient, and a qualified or enhanced novelty (nonobviousness) is necessary, why should one try to determine the smaller concept embodied in the broader one? Q.2 Does Draft SPLT suggest inclusion of any traditional knowledge existing in the field of interest ? Q.3 In deciding the novelty the time frame is an interesting issue. According to PCT regulations Rule 34, the minimum documentation with regard to national patent documents includes searches in patent documents issued in a number of countries from 1920 and forward.

#3 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Grounds for patentability
A.27.1 TRIPSstates patent..in all field of technology A.12 of the draft SPLT states that patentable subject matter shall include products and processes that can be used in any field of activity eg. Software, business models, research tools get patentable but not patentable in many countries yet. Indian Patent Act Sec- 3,4 (Contrary) TRIPS: freedom to national patent subject to three step patent criteria SPLT : uniform standards across countries Exceptions In contrast to A. 27(2)(3) exceptions in TRIPS, the exceptions to patent ability proposed under A.12(1)(b) SPLT are limited to mere discoveries, abstract ideas, scientific and mathematical theories, laws of nature and purely aesthetic creations & in A. 2(2), 13(4) & 14(3) of SPLT which says Nothing in this Treaty & the Regulations shall limit the freedom of a Contracting Party to .. protection of genetic resources, biological diversities, traditional knowledge & the environment.]

#4 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Industrial application/Utility
A.12(4) Formulations made under Draft SPLT that an invention would be considered to be industrially applicable are: (1) If it "can be made or used for exploitation in any field of (commercial) / (economic)activity". (2) That can be made or used in any kind of industry. "the term industry shall be understood in its broadest sense, as in the Paris Convention". (3) That industrially applicable inventions should have a specific, substantial and credible utility. Most Countries proposed: industrial applicability of an invention as a criterion US, Canada & Australia : use the criterion of utility instead Harmonisation of industrial applicability is a misnomer to say as requirements of the industrial utility differ among the countries that have been persistent towards set standard defined objectives.

#5 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Disclosure Norms
Article 10 Enabling Disclosure : The application shall disclose the claimed invention in a manner sufficiently clear and complete for that invention to be carried out by a person skilled in the art. The disclosure of the claimed invention shall be considered sufficiently clear and complete if it provides information which is sufficient to allow that invention to be made and used by a person skilled in the art on the filing date, without undue experimentation [as prescribed in the Regulations].

These conditions regarding disclosure essentially correspond with the conditions. That have been set out in Article 29 of the agreement on TRIPS. The approach followed in the SPLT would thus directly conflict with the proposals being made by developing countries to the TRIPS Council.

#5 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Disclosure Norms
Proposed by Developing countries: (i) Disclosure of the source and country of origin of the biological resource & of the traditional knowledge used in the invention; (ii) evidence of prior informed consent through approval of authorities under the relevant national regimes; and (iii) evidence of fair and equitable benefit sharing under the national regime of the country of origin.

As regards the term 'source', the broadest possible definition was proposed. It was clarified that the term "not only includes other terms used in this context such as 'origin', 'geographical origin', 'country of origin of genetic resources' or 'Contracting Party providing genetic resources,but also any other source such as publications in scientific journals or books, databases on traditional knowledge.

Q1. Where a disclosure was made in non-documentary form, such as by oral communication, by display or through use, what degree of evidence is required to prove the timing and the contents of such nondocumentary disclosure? What are the standards applied under the applicable law?

Advantage of Disclosure To prevent grant of bad patents To promote legal certainty Revocation of erroneously granted patent is expensive It help to build database which act as a aid prior art information Crucial factor in determination of patentability of biotechnological inventions

First to file versus first to invent Grace period"

SPLT Art.9(1): An item of prior art with respect to a claimed invention shall not affect the patentability of that claimed invention, in so far as that item was included in the prior art on a date during the [12] [six] months preceding the prior date of the claimed invention, i). by the inventor, ii). by an Office and the item of prior art was contained.. ii). SPLT Art. 9 (2) [Invoking Grace Period] Alternative A/B Introduction of Grace Period 12/6 month GP from disclosure to priority date (NOT local filing date) iii). SPLT Art. 9 (4) [Third Party Right] Alternative A/B

Introduction of Grace Period ? 12/6 month GP from disclosure to priority date (NOT local filing date)

Q.1 Publication by applicant prior to filing date anywhere in the world may defeat the novelty of same applicant s invention in a country which does not provide grace period ? Q.2 First to file system the prior art is considered to be the disclosure available to the public before the filing date, where as in case of first to invent system the cut off date is the date of invention? Q.3 Should third party rights, as they relate to grace period disclosures, be mandatory, optional or left unmentioned? IF the current draft is adopted

The member countries should have a grace period during the 12 months preceding the priority date (NOT local filing date) of the invention. Many member countries should enlarge the scope of the grace period to include all kinds of the disclosure by the inventor/applicant such as commercial use.

Inventive Steps"
SPLT Art. 12 (3) [Inventive Step/Non-Obviousness] A claimed invention shall involve an inventive step. It shall be considered to involve an inventive step (be non-obvious) if, having regard to the differences and similarities between the claimed invention and the prior art as defined in Article 8(1), the claimed invention as a whole would not have been obvious to a person skilled in the art at the claim date of the claimed invention[, as prescribed in the Regulations]. Indian Patent Act - Sec-2(ja) inventive step is one which makes the invention non-obvious to a person skilled in the art. In other words, if the invention is obvious to the person skilled in the art, it cannot be said to involve an inventive step. After the Amendment in 2005, the definition of inventive step has been enlarged to include economic significance of the invention as well.

Flexibility in National Policies Provided in TRIPS to be violated by SPLT

1. 2. Grounds for refusal to claimed invention (A.13) Grounds for invalidation or revocation of claim or granted patent (A.14) Violates Doha Declaration PCT Article 27(5) allows a Contracting State to apply any substantive conditions of patentability as it desires during the national phase.

3. 4.

1. To promote public interest and health concern as provided in A.8 of TRIPS to give right to member countries is prejudice to their national policy 2. Provisions are controversial and political in nature

Invalidation of granted patents or claim (A.14)

[Grounds for Refusal of a Claimed Invention] [A.13(1)]: An application shall be refused where the Office finds that such application or a claimed invention in the application does not meet any of the following requirements: (i) the applicant does not have the right to the patent referred to in Article 4; (ii) the claimed invention does not meet the requirements of Articles 6, 11(2) & (3) & 12; (iii) the application does not meet the requirements of the Patent Law Treaty, as implemented in the applicable law, and of Articles 5 and 10; or (iv) an amendment or correction results in a disclosure as prohibited by Article 7(3).

Interpretation of Claims

This particular aspect is related to infringement only. A.11(4) Draft SPLT [Interpretation of Claims] (a) The scope of the claims shall be determined by their wording. The description & the drawings, as amended or corrected under the applicable law, and the general knowledge of a person skilled in the art on the filing date shall[, in accordance with The Regulations,] be taken into account for the interpretation of the claims.
Q.1 Whether for the purpose of determining the scope of protection conferred by the patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims. Q.2 What should be procedures for claim interpretation for special types of claims, such as means-plus-function claims, product-by-process claims, and claims associated with use? Q.3 To Identify the notional person skilled in the art and identify the relevant common general knowledge of that person? Q.4 To Identify what, if any, differences exist between the matter cited as forming part of the state of the art & the inventive concept of the claim? To interpret claims in practice is always a disputable problem for each country to clarify rights & infringement.

1. Developing countries & Least Developed Countries are struggling even to implement TRIPS provisions? 2. SPLT would shrink the flexibilities present in TRIPS? 3. Limits on the freedom of countries to act as they see fit in this field?

1. What are the benefits of harmonisation & what are the costs of not harmonising? 2. Do users regard harmonisation of patent law as an urgent issue which should be resolved in the near future? 3. Is International harmonisation ultimate goal per se or an end in itself ?

NAPOLEON BONAPARTE SAID "NOTHING IMPOSSIBLE IN LIFE

BUT?

ronak.karanpuria@gmail.com