By Jane Calvert and Greg Lynch

This article was also published in Chemistry New Zealand, March 2002.

Those who seek patent protection for their research developments in a number of countries are frequently alarmed and sometimes frustrated with differences in patent law from country to country. The differences can range from minor procedural requirements through to important variations in substantive law.

Increased costs
One example of differences in procedural requirements having a compliance cost is the need to file a variety of different forms signed by applicants and inventors. Variations in substantive law can mean that the strength of a patent in one country may not match the strength of a corresponding patent in another country. An invention may even be patentable in one country but not in another.

The wide variety of legal regimes that make up the international landscape of patent law and practice leads to increased costs for inventors and applicants. Each jurisdiction has its own procedural rules. A multi-jurisdictional patent filing programme consequently has an assortment of actions which must be completed and a myriad of deadlines to be met to avoid the loss of patent rights altogether. In addition, there is considerable duplication of work for patent offices. Why is it that a patent application in one country can successfully pass rigorous examination and proceed to a granted patent only for the same process to be repeated in another country? It is complexities in the patent system such as these that are behind measures to harmonise both procedural and substantive patent law worldwide.

Attempts at harmonisation
One difficulty with harmonisation is that each country (or region) considers that control over matters of economic importance, such as the grant of an exclusive right, is a fundamental principle (even a matter of preserving its own sovereignty). Nevertheless, there is a trend towards the harmonisation of patent law, as can be seen in the three treaties described in the following paragraphs:

Patent Co-operation Treaty ("PCT")
This treaty is already in place and has more than 100 member countries. The Patent Co-operation Treaty ("PCT") provides a procedure for the filing of a single international patent application which, although ultimately scrutinised by each national or regional patent office, provides significant advantages for patent applicants. The PCT procedure provides applicants with additional valuable time before important and potentially costly decisions must be made. An automatic novelty search and an optional international examination provide an objective assessment of the patentability of the claimed invention and helps smooth the path for examination in each of the elected countries or regions.

Patent Law Treaty ("PLT")
A second treaty known as the Patent Law Treaty ("PLT") was concluded in 2000. The PLT harmonises and streamlines formal patent procedures relating to both national and regional patent applications and to the maintenance of patents. The PLT has not yet entered into force but will do so after 10 countries have ratified the treaty.

Substantive Patent Law Treaty ("SPLT")
A third treaty currently being negotiated has the objective of harmonising substantive patent law internationally. The Substantive Patent Law Treaty ("SPLT") is in draft form and a second round of talks took place at the World Intellectual Property Organisation ("WIPO") in Geneva in November 2001.

The SPLT covers several basic legal principles that underpin the grant of patents in different countries, such as definitions for prior art, novelty, inventiveness, and industrial applicability. The committee of WIPO that is responsible for the SPLT is due to meet again in May 2002. The committee will be operating in the context of the stated vision of the Director General of WIPO that "WIPO must continue to provide strong leadership in developing the patent system to facilitate the process of harnessing creative potential for economical benefit in all countries".

While we await with interest any developments with the SPLT, it is likely to be several years yet before such a treaty comes into force. Nevertheless, inventors and applicants worldwide will take considerable comfort from knowing that the harmonisation of international patent law is in progress. For all involved in the patent process, a simplified and less costly international patent procedure cannot come soon enough.

This is a general summary only and should not be taken as a substitute for specific advice.

Patent Proze
Baldwin Shelston Waters
Email: email@bsw.com

Web site: Baldwin Shelston Waters