Article By John Richards1

The European Background of the Patent System

In medieval times, the grant of exclusive rights "monopolies" by the sovereign had been a convenient way in which the sovereign could raise money without the need to resort to taxation. Such grants were common in many European countries and were typically made by way of "letters patent".2 Some of these, for example in mining regions or in the production of certain textiles seem to have had a relation to innovations. Although there seems to have been an earlier law directed specifically at inventions relating to the manufacture of silk, the first general law providing for the grant of exclusive rights for limited periods to the makers of inventions in general as a deliberate act of economic policy was probably in Venice in 1474. It does not seem coincidental that this was during a long war between Venice and the Turks during which Venice lost most of its trading empire in the Eastern Mediterranean and consequently had to refocus its economy on manufacture rather than trade.3 Indeed, as Venice's domination of trade with the east weakened, it adopted a number of measures to establish and maintain a preeminence in manufacturing including enacting laws prohibiting emigration of skilled artisans and the export of certain materials, while at the same time encouraging the immigration of skilled workers from other countries, for example by providing incentives such as a tax holiday for two years after arrival in Venice.

Early in the Seventeenth Century, towards the end of Elizabeth I's reign and more particularly during that of her successor James I, the English courts, probably at least to some extent noting developments on the Continent, started to restrict the rights of the sovereign to grant monopolies unless they were for the introduction of a new industry to the country.4 In 1624 as part of the skirmishing between Parliament and the Crown leading up to the English Civil War, the English Parliament passed the Statute of Monopolies. This statute limited the power of the Crown to confer monopolies to grants for defined periods (14 years - the duration of two training periods for craft apprentices) and most importantly to make such grants only for "manners of new manufacture" that were introduced into the realm by the recipient of the monopoly. Furthermore, monopolies were, conditioned on their not being "mischievous to the state" (for example by raising prices of commodities) or "generally inconvenient". In the early days the patent grant itself set out a requirement that the patent owner trained apprentices in use of the patented invention but during the eighteenth century this was replaced by a requirement to file a description of the invention. In 1778, Lord Mansfield, in Liardet v. Johnson5 held that a description that was inadequate to provide proper instruction to others to make the invention was a ground for holding the patent invalid.

The original English approach, which was followed in the American Constitution, was to place emphasis on the advantage to society as a whole of developing new inventions. Section 1 of the French law of 1791 took a somewhat different approach: "All new discoveries are the property of the author; to assure the inventor the property and temporary enjoyment of his discovery, there shall be delivered to him a patent for five, ten or fifteen years". The emphasis here was on the inventor having property in his discovery - an emphasis on the rights in the invention rather than on the benefits to society. Today this approach is of limited importance in the patent field but it is still significant in the area of copyright - where the Anglo Saxon approach focuses heavily on the bundle of economic rights associated with control over whether others are entitled to use those rights, for example to copy a work. The French approach on the other hand focuses more heavily on the moral rights of authors - a fact that is emphasized by the fact that the word generally used as the French translation of the word "Copyright" is " droit d'auteur" (literally Author's Rights).

Modern thinking on the rationale for a patent system effectively sees this as a contract between the inventor and society at large. This was well expressed in a report to the French Chamber of Deputies in the debates preceding adoption of the French Patent Law of 1844 (a law that remained in effect with little change up to the 1960's):

Every useful discovery is, in to Kant's words 'the presentation of a service rendered to Society'. It is, therefore, just that he who has rendered this service should be compensated by Society that received it. This is an equitable result, a veritable contract or exchange that operates between the authors of a new discovery and Society. The former supply the noble products of their intelligence and Society grants to them in return the advantages of an exclusive exploitation of their discovery for a limited period.

From the Nineteenth Century to World War II

While the American approach to patents in the late nineteenth century was aptly expressed by Mark Twain: "a country without a patent office and good patent laws was just a crab and couldn't travel anyway but sideways or backwards"6, this view was not necessarily true in Europe where abolition of the patent system was seriously considered at various times in both the United Kingdom7 and Prussia (Bismarck was at best lukewarm about the merits of the patent system) and the system was actually abolished in the Netherlands from 1869 until 1912 at least in part because it was thought to be contrary to democratic principles.

Nevertheless, it was during this period that the international patent system started to come into being. Patents, as rights granted by the state, are inevitably territorial in nature. This presents significant practical problems for an inventor who wishes to seek protection outside his or her home country. In most countries the intellectual property systems developed during the nineteenth century in a fairly nationalistic way. United States patent law development included periods when foreigners could only obtain patents if they were resident in the United States and intended to become citizens. At other times, where foreigners were charged much more for the right to secure patent than were American citizens.

The problems of avoiding national discrimination were recognized by the mid-century when provisions recognizing the need for fair treatment of what would now be called the intellectual property of citizens of other nations started to be incorporated into commercial treaties. One of the first of these was the Treaty of Commerce between Russia and Great Britain of 1859.8

The United States was not alone in discriminating against foreigners and matters came to a head in connection with the Vienna International Exposition of 1873. At the time the patent law of Austria - Hungary had a provision similar to that of the United States Act of 1832 requiring working of an invention within a country with one year in order to maintain validity of any patent issued for it. Foreign inventors were reluctant to exhibit at the exposition for fear that by exhibiting their inventions and being unable to work them within the Austrian- Hungarian Empire within the prescribed one-year period they would in effect be giving their inventions away. Scientific American on December 23, 1871 commented on the situation as follows: "It was almost equivalent to prohibition to require that the locomotive engines of Great Britain, the telegraph instruments of the United States, and the printed muslins of France shall be manufactured on Austrian soil within a year from securing the patent." The article went on to note that the Austrian law meant that "the value of Austrian patents issued to Americans and other foreigners can be easily escheated to the benefit of the Austrian public." Following representations by the American Minister in Vienna, the Austrian authorities passed a special law to try to protect foreign inventions from loss of rights by exhibiting at the Exposition and convened an international congress in Vienna to discuss ways of improving international protection for inventions. A number of resolutions were passed including one to the effect that "natural rights" of the inventor should be protected by the laws of all "civilized nations" but no legally enforceable treaty was agreed to.

A similar congress accompanied the Paris International Exposition of 1878. This occurred in the wake of the creation of a number of international organizations during the 1870's including the Universal Postal Union, the International Red Cross and the International Bureau of Weights and Measures. At the time there were high hopes that a treaty could be drafted creating a world wide patent system. But it was not to be. Following further conferences in Paris in 1880 and 1883 the best that could be achieved was a convention prescribing how member states could treat nationals of other states and laying down certain minimum provisions as to various aspects of what is now known as intellectual property law, including patents, designs (which in most of the world are regarded as a separate species of intellectual property law) and trademarks.9 From the patent point of view, its most important features were provisions barring discrimination against foreigners (national treatment) and the creation of a priority right. This provided that as long as one acted within a specified period (initially six months, now one year) one would not lose the right to a patent in other countries that were members of the convention simply because of a disclosure of it after an initial filing in one of the member countries of the convention. A further provision protected tackle on ships that were temporarily within the jurisdiction of a country where such tackle was patented from claims of infringement of such a patent.

International development of the Patent System throughout the first half of the Twentieth Century was largely confined to revisions of the Paris Convention, for the most part with a view to making it easier for inventors who had filed an application in one country that was a member of the Convention to claim priority rom that application for applications filed in other countries that were members of the convention. Consistent with this, there was also little change in substantive patent law in most countries10, one exception being the United Kingdom which abolished patents for chemical products in 191911 but reintroduced protection for such products in 1949. Indeed at that time chemical products, medical inventions and living organisms were regarded as being outside the scope of patent protection in many countries. In the period of colonial empires, patents granted in the home country often extended to that country's overseas possessions.12 One exception to this was the British Empire13 where colonies has their own patent ordinances although in many, but not all, cases, these provided that protection could be obtained only by registering a granted British patent in the colony.

During this period there was substantial diversity between national patent systems. Perhaps the only thing common to all systems was that to be patentable, something had to be new. Even with this the definition of "new" varied from country to country. While most countries granted patents to the first to file an application for the invention others, including the United States, Canada, the Philippines regarded an invention as being new as long as it had not been published prior to the patent applicants date of invention (subject to certain requirements to prevent such an inventor simply sitting on his or her invention and failing to make it public)14. However, even within the "first to file group" there were significant differences. Thus, in the United Kingdom, something simply had to be new within the United Kingdom and the fact that it had been published elsewhere in the world was irrelevant, furthermore, publications to a "learned society" and certain other disclosures were excused as bars to patentability as long as one filed a patent application within six months of that disclosure. In Germany, publications anywhere in the world counted as a bar, but use of the invention would only bar the grant of a patent if that use had been in Germany. Furthermore, any publication that was more than 100 years old was discounted on the basis that if nobody had seen fit to put an invention into practice within the past 100 years or had written about it within the past 100 years, then it was just as much use to society to resurrect the invention now as it would be to have invented it from scratch. In France any prior divulgation by anyone anywhere in the world was sufficient to destroy novelty.

In most countries, however, the idea took hold fairly early that in addition to being new, however this was defined, it was also necessary that the invention had some degree of additional inventivity, a concept initially developed by the courts15. Ultimately these concepts were codified in the United Kingdom in 193216, in the United States in195217, in Japan in 196018, in France in 196819 and in Germany in 1976.20 In Germany, case law also established fairly early that to be patentable, the inventor must have exercised some inventive activity and that the invention must show a technical advance over the prior art.21

In other areas, however, differences abounded. Many countries permitted someone who had already secured a patent for an invention to patent obvious variants of it by way of patents of addition, provided only that the patent of addition expired with the patent on the basic invention.22

Nor was there agreement on the subject matter for which patent protection could be granted. While both the United States and the United Kingdom had broad definitions of patentable subject matter23, other countries had more structured and limited definitions.24

There was not even agreement as to whether being the actual deviser of the invention oneself was a prerequisite for patentability or whether one could secure a patent simply by being the first to introduce the invention into a country. For example, the United Kingdom granted patents on so-called communication applications where the applicant could be the party to whom an application had been communicated from abroad. Other countries granted patents of importation where a patent could be based on the grant of a patent in some other country.25

In Belgium, France26 and Italy, patents were granted automatically on filing and it was left to the courts subsequently to determine whether they were valid or not. In the United Kingdom, examination was carried out, but the Patent Office was not given the right to refuse a patent in ex parte proceedings on the ground of obviousness.27 In the United States, Japan and Germany, the Patent Office was given the power to refuse the grant of a patent on the ground of obviousness. Furthermore, one had to demonstrate to the German Examiners that the invention constituted a technical advance in the art, that is to say, that it was better than what had gone before. The toughest examination under the old procedure, however, was in the Netherlands where the Patent Office was fairly firmly convinced that everything was obvious.

The differences were not confined to methods of obtaining patents and the standards by which they were to be judged. There were and are also significant differences in how patents were to be interpreted by the courts. Thus in Germany, something would be held to be an infringement if it used what the court determined to be the same inventive concept as what was claimed: the so-called principle of "central claiming". This led to claims being drafted in such a way as to try to pint out the inventive step that had been taken. In the United States and the United Kingdom on the other hand, the predominant theory was that patents were a property right and so, like a deed for a piece of land, the claims should define precisely what was within the claimed territory: the so-called principle of "peripheral" claiming. The harshness of this when someone clearly used the same inventive idea but fell outside the scope of the claims was ameliorated in the United States by the development of the doctrine of equivalents and to a much lesser extent in the United Kingdom by the idea that there might be infringement of a claim by something not literally falling within it if it took the "pith and marrow" of the claimed invention. In some countries, such as France and Italy, there were no claims at all and the courts had to determine whether there was infringement based on their own understanding of the invention described in the patent document.

Developments From 1945 to 1980

After World War II there were increasing pressures for change. The initial impetus came from congestion in patent offices of some countries and the increasing costs of securing patent protection, as this became needed in more countries as they became independent and more industrialized. The first phase which was largely completed by the end of the 1970's comprised three elements: 1) attempts by national patent offices to reduce their work loads; 2) regional cooperation in patent granting and 3) the establishment of an international mechanism to aid the granting of patents.

Reducing the Work Load

So far as the first element is concerned, traditionally the contents of a patent application were not made public until the patent had been examined. At that point, in some countries, such as the United States and Canada the patent was granted. In others, such as Japan and most European countries where examination was carried out, the application was published before grant to give the public a limited period in which to oppose the grant of the patent if it was aware of grounds on which the patent should not been granted that had not been found during the patent office examination. In the old days one of the toughest countries in which to secure a patent was the Netherlands. By the mid 1960's the Dutch Patent Office was falling very far behind in its examination of patent applications. The authorities noted that many patents when granted were being allowed to lapse long before their maximum possible duration and so concluded that much of the examining effort was being wasted on applications, which in the end had no commercial significance. It was therefore decided that applications would only be examined if the applicant or a third party specifically requested examination, but that if examination was not requested within seven years of filing, the application would become abandoned. Industry, however, was not happy with the idea that other people's applications could remain secret for a period of seven years plus the time taken for examination. This could result in delays of up to ten years before one knew whether a patent might issue to someone else on something in which one might wish to invest substantial sums of money, which would become wasted once a third party's patent had issued. Consequently, the Dutch law also provided that all patent applications would be made available for public inspection eighteen months from their claimed priority date. Since then many other countries have adopted a so-called "deferred examination system"28 and publication of applications eighteen moths after their priority has become the norm today.

The Development of Regional Patent Offices

The second development in the 60's and 70's was the creation of regional patent offices, which would examine applications on behalf of a number of countries. The most significant of these is the European Patent Convention, membership of which is open to all European countries irrespective of whether they are members of the European Union. This created the European Patent Office with its headquarters in Munich to carry out examination of patent applications that could give rise to patents in all member states of the convention.29 Once an application has been found grantable by the European Patent Office, however, it morphs into individual sets of patent rights for each of the countries for which the necessary formalities are carried out and the fees paid. A significant by-product of the adoption of the European Patent Convention was the need for harmonization of the basis on which patents should be granted and in particular the definition of patentable subject matter and novelty. So far as the former is concerned, the European Patent Convention built on work that had been carried out in the 1960's (the Strasbourg Convention30) which rather than providing a flexible definition as had been the case in many countries hitherto, set out to define what was not patentable. It was unfortunately out of date almost before it was completed and failed to take account of the needs of the biotechnology and computer industries. Attempts to remedy these defects have met with mixed success.31 So far as novelty is concerned, the old French standard of universal novelty was adopted. In any case national laws continue to apply after the grant of a patent and even on issues such as whether an invention should be regarded as lacking inventive step (i.e. is obvious), differences between European countries remain.

Other regional treaties are, the African Intellectual Property Organization (known from its initials in French as OAPI), African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Convention and the Gulf Cooperation Council

OAPI was originally created to take over responsibility for intellectual property matters in countries that had formerly been part of the French Union but to which French patents ceased to apply when the countries became independent. Unlike the European system, it provides for a unitary right, which is effective throughout all of its member countries32 without additional formalities. The organization has its headquarters in Yaoundé in Cameroon.

ARIPO operates a common patent office in Harare, Zimbabwe, which examines patent applications on behalf of its member countries.33 Unlike the European system, however, the ARIPO system allows member countries a period of six months after examination is complete to determine that an application does not comply with its own laws, for example having regard to protection for pharmaceutical products. Like the European system, however, national rights remain after grant and applicants can select the countries for which they wish protection.

The Eurasian Patent Convention was set up following the dissolution of the Soviet Union to provide a common means for applying for intellectual property protection in many of the former Soviet republics.34 In many aspects, the convention was modeled on the European Patent Convention so that a Eurasian patent application is examined by the Eurasian Patent Office in Moscow and can give rise to rights that can be effective in each of the member countries. Unlike the European Patent Convention, however, there is no need to translate the granted patent into any other language (the initial filing must be in Russian) and no national formalities need be complied with for the patent to be effective in all member states. After grant the patent owner does, however, have the right to indicate that it is no longer interested in protection in one or more of the countries initially covered and to cease paying for maintenance of the patent in such country.

The Gulf Cooperation Council35 has set up its Patent Office in Riyadh, Saudi Arabia. Unlike the other regional patent offices, however, the GCC office does not at present carry out its own substantive examination on patentability. This is normally contracted out to the patent office of a European country such as Austria. Once granted, a GCC patent is effective throughout the whole GCC region without further formalities.

In a similar vein, but not proceeding quite so far, the Andean Community36 adopted a common patent law37 without setting up a common patent office. The ultimate tribunal for interpreting the law is, however, the Justice Tribunal of the Andean Community that sits in Quito, Ecuador.

Improved International Cooperation

The third major step forward in the 60's and 70's was the adoption of the Patent Cooperation Treaty (PCT) in 1968. The treaty came into effect on June 1, 1978, the same day that the European Patent Office opened its doors. PCT's primary purpose was to simplify and reduce the cost of international patent filing by allowing the filing of a single application which could undergo a search and if requested by the applicant a preliminary examination by one of the major patent offices before the applicant had to incur the cost of filing an application in each of the countries in which it was interested. This then enabled the applicant to have a better idea of whether a patent was likely to be granted before incurring such coasts and also a period longer than that permitted under the Paris Convention to evaluate the commercial value of the invention being patented to see whether the costs of extensive international patent were justified.

Developments Since 1980

The developments in the 1960's and 70's and the later adaptations of them such as the Eurasian Patent Convention and the GCC Patent Office were all largely of a procedural nature. These have continued with improvements of PCT. Among these are simplification of the steps required to file the application and to delay national phase entry until thirty months from priority, and permitting some of the work previously done at the point of national phase entry, for example filing of various documents, to be done at the time of original filing of the PCT application. Further improvements have occurred in he quality of the search report, and from January 1, 2009, providing for a supplemental search report carried out by a second searching authority.

However, increasing global trade led to a need to address more substantive issues in international pa tent law and towards the end of the twentieth century pressure again built for the ideal that had been proposed but not achieved in the 1870's: to create a global patent system. The first step towards this was the TRIPS agreement. The second was intended to be a Patent Law Treaty that would harmonize aspects of substantive patent law.

TRIPS

Original thinking on the topic of increasing uniformity in patent law around the world was to use the traditional vehicle of the Paris Convention. Unfortunately a meeting convened for this purpose in Nairobi in 1981 was unable to achieve any useful result, having become enmeshed in the question of whether the Convention should be amended to permit exclusive compulsory licensing of patents in cases where the invention was not being worked in the country. This led to a search for an alternative vehicle for modernizing international patent law. This was found in the Uruguay Round negotiations for revision of the General Agreement on Tariffs and Trade. The result was the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS for short). This agreement is discussed in detail in the materials in patent law treaties. Among its features was the requirement that all members provide a minimum term for patent protection and, subject to a transition period for developing countries, that they do not discriminate between different areas of technology having regard to the availability of patent protection.

Patent Law Treaty

This, however still left open a number of differences between countries, perhaps most importantly what constituted prior art and the definition of novelty. A draft treaty addressing these issues was prepared in the early 1990s and a diplomatic conference convened in The Hague June 1991. The draft would have required the United States to change its system to one based on a first to file approach to novelty. While the administration that had been in office up to January 1991 had been willing to accept this as a possibility if appropriate concessions on other issues could be obtained from Europe in return, the new Clinton administration was not willing to do this. In the end a limited treaty addressing formal aspects of patent granting procedures and patent maintenance was adopted as the Patent Law Treaty.38

The aborted draft for a substantive law treaty did, however, have some significance in that its proposed provision on novelty provided that an inventor's own publication of an invention within a year prior to filing a patent application would not be prejudicial to the validity of any patent application of patent for that invention. This feature has as a result been incorporated into a number of patent laws, including those of Mexico, Canada, the Andean Community, Australia and South Korea.

At about the same time, there seems to have been a world-wide concern about the lack of patenting activity by small and medium sized enterprises and a surge of enthusiasm for providing "second tier protection" by way of utility models or "petty patents" to provide for cheap ways in which short term protection could be afforded to those who could not afford to pay for patent full patent protection and a proper examination of their applications. Today, however, this wave of enthusiasm seems to be waning as the realization that the existence of large numbers of unexamined rights covering minor improvements can have a negative impact on the development of new technology.

Following the adoption of the Patent Law Treaty, attention again turned to improved harmonization of substantive patent law issues. And proposals were made for a Substantive Patent Law Treaty (SPLT). However, these proposals did not proceed as far or as fast as was hoped and have to some extent been replaced by more limited objectives such as patent law provisions of free trade agreements and the establishment of enhanced cooperation between individual patent offices. Coincident with these efforts there have been increasing concerns in some countries about their needs to be able to address health care issues when patents on relevant drugs are held by foreigners and about what is perceived by some to be appropriation by foreign countries of their genetic resources and traditional knowledge, all of which creates additional problems in creation of a world-wide system.

Following two failed attempts to move forward with a Substantive Patent Law Treaty in 2006, Brigid Quinn, deputy director at the office of public affairs of the U.S. Patent and Trademark Office, commented "The U.S. is disappointed that there was no agreement to move forward with substantive patent law harmonization on prior art issues in WIPO,"and we think that such an approach would benefit all countries by allowing them to rely more on examination work performed in other countries under common examination standards." She also "The U.S. intends to pursue harmonization of prior art issues within the group of developed countries, and will evaluate in the future whether an agreement may be possible in WIPO at some point."

Free Trade Agreements

In fact the United States had already embarked on a series of agreements with individual countries that contained substantial provisions relating to patent law. The first significant step was the North American Free Trade Agreement, but this has been followed by agreements with Chile, Singapore, Australia, Morocco, Bahrain, Dominican Republic, Costa Rica, El Salvador, Oman, Guatemala, Honduras, Nicaragua and Peru.39 All of the agreements contain a number of patent provisions:

1. Most of the agreements, those with Chile and Morocco being exceptions, contain TRIPs-type provisions relating to what constitutes patentable subject matter, although as noted below, some of the agreements require the use of patent rather than TRIPs' other option of plant variety protection for plants.

2. Provided that patents may only be revoked on the same grounds as the applications for them could have been refused or for inequitable conduct.

3. A requirement in all agreements, except that with Chile and Peru40, to provide for patent term extension to compensate for delays in marketing of pharmaceuticals as a result of the need to secure regulatory approval.

4. All agreements permit limited exceptions from the exclusivity provided by a patent "provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of legitimate interests of third parties."

5. Where activities within the scope of a patent claim are permitted to allow a third party intending to market a pharmaceutical product after a patent has expired to produce data to enable it to obtain marketing approval for such post-expiration marketing, any product produced shall be used solely for this purpose and shall not be exported for any purposes other than for obtaining such approval.

6. All contain a requirement to provide for patent term extension to compensate for unreasonable delays in the grant of a patent.41

7. All agreements, except that with Singapore, provide for a one-year grace period for determining novelty when the publication in question derives from the applicant.

8. All agreements, except those with Singapore and Chile, require that patents include a written description that enables the invention to be carried out without undue experimentation and is sufficient to show the inventor had possession of the claimed invention at the filing date. The agreements with Australia, Morocco, Oman and the Central American countries also require that the "credible specific, substantial" utility test of US law be used as the test for whether an invention has industrial applicability.

Improved Cooperation Between Individual Patent Offices

In addition to the inclusion of provisions relating to substantive patent law included in free trade agreements, the United States, the European Patent Office and the Japanese Patent Office have been cooperating on several projects for many years.42 These have been aimed largely at procedural improvements. Cooperation with the European Patent Office includes a program for electronic exchange of priority documents to reduce the workload in each office. There are continuing efforts by all three offices.43

During 2006, a new form of cooperation appeared in the form of a patent prosecution highway between the United States Patent and Trademark Office and the Japanese Patent Office. The patent prosecution highway enables applicants who have secured allowance of applications in one of these patent offices to obtain expedited prosecution of an application containing equivalent claims in the other. During 2007, additional patent prosecution highways were created between the United States and the United Kingdom and also between Japan and both the United Kingdom and Korea. Additional highways opened by the United States include those with Australia, Canada, Denmark, Singapore, Germany and the European Patent Office. Japan has such highways with the United States but also, Korea, the United Kingdom, Germany, Denmark, Finland and Russia and has announced its intention to open one with Austria on July 1 2009, Korea has a highway with Denmark in addition to those with the United States and Japan. Use of the highways has so far proved a little disappointing to the patent offices involved. Possibly this is because of the need to commence prosecution at the country at the receiving end of the highway with claims that may already have been limited during prosecution in the country of first filing and perceived differences in the approach to patentability in different countries leading to fears that claims granted by use of the highway may be narrower than might be secured by ordinary examination. If the highways do in fact speed up prosecution, however, these fears may be overcome, at least in cases where no limitation of the original claims was required in the country of origin.

In another pilot program, the USPTO and the Japanese Patent Office are cooperating on what is called the "New Route" for patent prosecution under which is similar to PCT except that WIPO is not involved. An application filed under the New Route procedure in one country is deemed to be an effective application in both and the patent office of the country in which an application is first filed undertakes the initial examination and publication of the application, with the applicant being given up to thirty months to effect entry into the other patent office and bring the results of that examination to the patent office of the other country as if it were an international search report or international preliminary report on patentability issued under PCT.44

Under the a further experimental project, the Triway pilot project, each of the USPTO, EPO and Japanese Patent Office conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results from each of the Offices are then shared among the Offices in order to reduce the search and examination.

Conclusion

Despite the pessimism that exists about ever achieving the goal of a global patent first suggested over 130 years ago, the last half century has in fact seen many real steps forward in making patent laws more similar and therefore more hospitable to international trade than could have been imagined in 1950. The problems now being encountered are not new. Every country has a different perspective depending on its state of economic development, the United States was not shy to discriminate against foreigners in the early stages of its industrialization and Germany and Japan did not permit patent protection for chemicals until the final third of the twentieth century. Nevertheless over time a consensus has developed on many issues, which are now effectively "harmonized" in most countries. Indeed there is a case to be made for saying that permitting individual countries some flexibility for experiment in face permits the best ultimate norm to be adopted for such harmonization.

Footnotes

1.E-mail address: iferraro@ladas.com.

2.The term "letters patent" means an open letter from the sovereign having general effect, as opposed to private correspondence. A search for "patent" in Lexis state law library finds that most cases in which the term is used still refer to land grants rather than intellectual property.

3.Venice's main trading post in the Eastern Mediterranean, the Negropont, fell to the Turks on July 12, 1470.

4.See in particular the Clothworkers of Ipswich Case (King's Bench 1615)

5. [1778] 1 WPC 52.

6."A Connecticut Yankee at King Arthur's Court" Chapter IX.

7.See, for example The Economist June 5, 1869. Attacks on the patent system were associated with the free trade movement of the mid-Nineteenth century. This movement began to lose momentum in the 1870's. It is noticeable that when, following the Meiji Restoration (1864), Japan looked to the West for inspiration, it adopted a patent system, modeled on the German, as early as 1885.

8.This, however, did not deal with patents but only trademark rights. Most of the early treaties were focused on trademarks rather than patents, although some did cover design rights. For more information on early bilateral treaties see Stephen P. Ladas "Patents, Trademarks and Related Rights: National and International Protection", Harvard University Press, 1975.

9."Industrial Property" is a term traditionally used in Europe to refer to utility patents, designs and trademarks over the last 30 years or so it has been largely superseded by the term "intellectual property which includes additional topics such as copyright and trade secrets. For a fuller discussion of the history of the Paris Convention see Ladas, "Patents, Trademarks and Related Rights: National and International Protection", Harvard University Press, 1975.

10.The French Law of 1844 survived until 1986, with only one significant change after World War II to permit special patents for medicaments. The Imperial German statute of 1877 survived largely unchanged having regard to defining what was patentable until 1978, although the enactment of a law relating to employed inventor's rights in 1936 had a significant impact. The U.S. Act of 1952 was largely a restatement and codification of the law, as it had existed from the end of the nineteenth century.

11.This was done on the theory that Germany, which at the time did not grant patents for chemical products, had had an unfair advantage prior to World War I in that German chemical manufacturers could obtain patents in the United Kingdom while British chemical manufacturers were unable to obtain equivalent patents in Germany.

12.For example until 1962, French patents covered all territories of the French Union except Morocco and Tunis. This fact was a primary reason for the creation of the first international patent granted through a single filing, that of the Organization Africaine de la Propriété Industrielle which took over responsibility for granting patents in former territories of the French Union in Africa after they achieved independence from France in the early 1960's. Elsewhere, from 1910 to 1945 Japanese patents extended to Korea and from 1898 to 1947 U.S. patents extended to the Philippines.

13.The British Patent Act of 1852 restricted the extent of British Patents to the United Kingdom, the Isle of Man and the Channel Islands. That of 1907 dropped the Channel Islands from the scope of protection. However, the 1978 Act added the U.K. continental shelf to the territory covered by a British patent.

14.This was also the position in Japan up to 1921 when Section 8 of the Japanese Patent Law of that year set out the novelty requirements on a first-to-file basis.

15.See, for example Hotchkiss v. Greenwood 52 US 248 (1850) in the United States and Harwood v. Great Northern Railway (1865) 11 H.L.C. 654 in the United Kingdom.

16.Section 25 of the Patents Act 1907 as amended in 1932 provided a definition of the grounds of invalidity of a patent for the first time. Among these was a provision that a patent was invalid if "the invention is obvious and does not involve any inventive step having regard to what was known or used prior to the date of the patent".

17.35 USC 103.

18.The earlier Japanese laws had simply required an "invention", although that of 1921 (under which Japan switched from a first-to-invent to a first-to-file regime) required this to be a "new industrial invention".

19.In 1968, a requirement for "inventive activity" was added to the prior requirements of novelty and industrial character. Prior to 1968 if the invention were a trivial modification of the prior art, the French courts would typically say that this did not have "patentable novelty".

20.Added by the law on International Patent Conventions. Under the German Acts of 1891 and 1936, the requirement was simply "a new invention, which allows industrial application." Interestingly, when codifying the requirement, the German legislature chose different language from that which had hitherto been used by the courts. Thus, whereas the courts had previously referred to the need for "Erfindungshöhe", the statute requires "erfiderische Tätigkeit", the same wording as used in the German text of the European patent Convention. Apparently this was done deliberately to make it clear that the new test was not necessarily the same as the old.

21.In order to provide protection for innovations that did not meet these standards, Germany adopted a utility model law in 1891. This provided for a three-year period of protection (much shorter than that provided by a regular patent - then 15 years from filing in Germany but did not require such a high degree of inventiveness or technical advance. Similar means for protecting "second tier" inventions were also adopted in Japan in 1905, but then did not become fashionable again until the last decade of the twentieth century.

22.Concerns about the effects of patents of addition started to appear after World War II. In a first phase (such as the Nordic laws of the late 1960's the possibility of securing a patent of addition was limited to a situation in which the patent of addition was applied for before publication of the application for the basic patent. Most countries abolished patents of addition in the last quarter of the twentieth century on the ground that such patents had the effect of unfairly extending the protection given by the basic patent into areas that were not patentable to others and made it more difficult to invent around the basic patent. Patents of Addition do, however, still exist in some countries including Australia and India and the U.S. practice of permitting terminal disclaimers in obviousness-type double patenting situations has something in common with the patent of addition approach.

23."Any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter" in the United States; "any manner of new manufacture" in the United Kingdom, limited as noted above from 1919 to 1949 to exclude chemical products.

24.For example the French law of 1844 required industrial character and novelty but also that the invention was not contrary to ordre public or morality and the exception to patenting chemical products in Germany (which was also true in Japan the Netherlands and Scandinavia.) Furthermore many countries had limitations on the patenting for pharmaceuticals and foodstuffs.

25.Still possible in Iran and only recently abolished in Argentina.

26.France did introduce a search for prior art in 1968, but the results were purely advisory.

27.The theory was that civil servants could not be trusted to make obviousness determinations without input from both sides of the argument.

28.Not all countries have deferment for the same period. For example: in Brazil, China, Japan Russia and Taiwan the term is three years from the filing date of the application; in Canada and South Korea it is five years from filing the application; in Malaysia the term is two years from the filing date, but it is possible to request deferral of this term; in Colombia, Ecuador and Peru it is six months from publication of the application; in Thailand it is five years from the publication of the application; in Saudi Arabia it is within a period specified by the Patent Office when the Patent Office is ready to take up the case for examination.

29.Most European countries west of Belarus and Ukraine are members. However, it should be noted that the European Patent Office does not have the exclusive right to examine patent applications for these countries; national patent offices remain in existence in all of them.

30.The Strasbourg Convention of 1963 relating to unification of various points of patent law did not come into effect until long after the European Patent Office had opened its doors. IT stemmed from attempts by the Council of Europe to achieve some uniformity between the patent laws of different European countries (such differences were seen to have negative implications on trade) and also from attempts by the Nordic countries to adopt a common patent law, although these attempts in the end did not achieve much.

31.There are interminable arguments about the scope of patent protection for computer-implemented inventions, with the issue currently before the EPO's Enlarged Board of Appeal as Case G3/08 [2009] OJ EPO 142. So far as Biotech is concerned, the European Union stepped in with a directive on Protection of Biotechnology Inventions (Directive 98/44 EC) directing each of its member states to adopt the law it set out. Although the EPO is not bound by the directive, because most of its member states national laws had to be amended to conform, the EPO amended its own rules accordingly. (Now EPC Rules 26, 27, 28 and 29).

32.The present membership is; Benin, Burkina Faso, Cameroon, Central Africa, Congo, Cote d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad, and Togo

33.At present Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe utilize of ARIPO's patent examination procedures.

34.The present membership is: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyz Republic, Moldova, Russia, Tajikistan and Turkmenistan,

35.The present membership is: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates (UAE).

36.Currently Bolivia, Colombia, Ecuador and Peru. Chile is an associate member but has not yet adopted Andean Community legislation. Venezuela withdrew from the Andean Community in April 2006 and in September 2008 announced that it would no longer apply IP legislation adopted by the Andean Community. The effect of this on applications filed prior to repudiation of Andean Community legislation is still not clear.

37.Decision 486 of the Andean Community.

38.Practical advantages provided by the treaty include the possibility of retrieval of a lost convention priority date and the ability of those outside the country to pay any maintenance fees required without the need for a local agent. So far this treaty has not been ratified by the United States although President Bush submitted the treaty to the Senate for advice and consent to ratification on September 5, 2006 and such advice and consent was given on December 7, 2007, subject to a reservation relating to unity of invention of PCT applications.

39.Agreements with Colombia, Korea and Panama are still awaiting Congressional approval.

40.The agreement with Peru permits but does not require such an extension.

41.The agreements with Australia, Singapore. Morocco, and Bahrain deem delays to be unreasonable if grant does not occur within the later of four years of filing or two years from requesting examination, those with Chile and the Central American countries, the later of five years from filing or three years from requesting examination. The Singapore agreement, however, also provides for an extension if a patent's grant has been delayed in a country on whose examination the Singapore patent is based. The Bahrain agreement also provides for an extension if a patent's grant has been delayed in a country on which the Bahrain patent is based. The agreement with Peru provides that such an extension is only available for "non-pharmaceutical" patents and only if requested by the patent owner.

42.See the trilateral web-site created by the three offices at: http://www.trilateral.net/

43.In 2008, it was announced that the cooperation in some areas would be expanded to include the Chinese and Korean patent offices.

44.Details of the New Route can be found at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/new_route_pilot_012008.pdf

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