Fordham University School of Law

SPRING 2009
(IPGL0521051)

INTERNATIONAL AND COMPARATIVE PATENT LAW

John Richards

Week 1

Patent Law Harmonization - A Historical Overview

John Richards
Ladas & Parry LLP

©John Richards 2007, 2009

The European Background to 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”.1 Some of these, for example in mining regions or in respect 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

1
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.

1
to refocus its economy on manufacture rather than trade.2 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'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.3 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 had the effect of
limiting the power of the Crown to the grant of monopolies to grants for limited periods (14
years - the duration of two training periods for craft apprentices) and most importantly only for
"manners of new manufacture" that were introduced into the realm by the recipient of the
monopoly. Such grants were, however, conditioned on their not being "mischievous to the state"
(for example by raising prices of commodities) or "generally inconvenient"

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 , whereas the French approach
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

2
Venice’s main trading post in the Eastern Mediterranean, the Negropont, fell to the Turks on July 12,
1470.
3
See in particular the Clothworkers of Ipswich Case (King's Bench 1615)

2
 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, this view was not necessarily true in
Europe where abolition of the patent system was seriously considered at various times in both
the United Kingdom4 and Prussia (Bismarck was at best luke-warm 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 (although they were not
known by that name) 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 and others
where foreigners were charged much more for the right to secure patent than were American
citizens.

The problems of avoiding national discrimination were recognized as early as 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 1859.5

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

4
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.
5
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.

3
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 State, 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
InterExposition 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.6 From the patent point of view, its most important
features were provisions barring discrimination against foreigners (national treatment), providing
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 one had made an initial filing in one of the member countries
of the convention (the priority right) and providing that tackle on ships that wee temporarily
within the jurisdiction of a country where such tackle was patented would not constitute
infringement of such a patent. The Paris Convention is discussed in more detail in the materials
relating to International Patent Treaties.
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

"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, Trade4marks and Related Rights: National and International
Protection" , Harvard University Press, 1975.

4
that were members of the convention. Consistent with this, there was also little change in
substantive patent law in most countries7, one exception being the United Kingdom which abolished patents for chemical
products in 19198 but reintroduced protection for such products in 1949. Indeed at that time chemical products, medical inventions and living
organisms were generally 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.9 One exception to this was the British Empire10 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. 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.. It was, however, also necessary that the
invention had some degree of additional inventivity as well as being “new”, a concept initially developed by the courts and codified in 1932. A
similar process had occurred somewhat earlier in the United States, but was not codified until 1952. 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. 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.11 In France, prior to 1968, the only requirement in France was
novelty. Such novelty was, however, determined by whether there had been any divulgation of the invention anywhere in the world.

7
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.
8
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.
9
For example French patents covered all territories of the French Union except Morocco and Tunis; from
1910 to 1945 Japanese patents extended to Korea and from 1898 to 1947 U.S. patents extended to the
Philippines.
10
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.
11
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.
5
 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.12

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 matter13, other countries had more structured and limited definitions.14

There was not even agreement as to whether actual invention 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.15

In Belgium, France16 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. 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 wee 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

12
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.
13
"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..
14
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 fof pharmaceuticals and foodstuffs.
15
Still possible in Iran and only recently abolished in Argentina.
16
France did introduce a search for prior art in 1968, but the results were purely advisory.
6
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.

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. As noted above, 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 wold 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”17 and
publication of applications eighteen moths after their priority has become the norm today.

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.18 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

17
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.
18
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.
7
countries for which the necessary formalities are carried out and the fees paid. A detailed description of the European Patent system is given
elsewhere in these materials. Ne significant by-product of the adoption of the European Patent Convention (which set up the Europan patent
Office) 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
Strassbourg Convention19) which rather than providing a flexible definition 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 and are discussed in the material on the European Patent system. So far as the question of 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 countries20 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.21 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.22 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

19
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.
20
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
21
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.
22
The present membership is: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyz Republic,
Moldova, Russia, Tajikistan and Turkmenistan,
8
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 Council23 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 Community24 adopted a common patent law25 without setting up a
common patent office. The ultimate tribunal for interpreting the interpreting the law is, however, the Justice Tribunal of the Andean Community
that sits in Quito, Ecuador.
The third major step forward in the 60's and 70's was the adoption of the Patent Cooperation Treaty in 1968. The treaty came into
effect on June 1, 1978, the same day that the European Patent Office opened its doors. This treaty is discussed in detail in the materials relating
to international patent treaties. Its 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. 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.

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 were the requirement that all members provide a minimum term for patent protection and, subject to a transition period for

23
The present membership is: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates
(UAE).
24
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..
25
Decision 486 of the Andean Community.
9
developing countries, that they do not discriminate between different areas of technology having regard to the availaibility of patent protection.

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
Bush 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.

The aborted draft 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.

Another way in which life has become easier is by continuing improvements and enhancements of the Patent Cooperation Treaty.
First by simplifying the steps that one had to take to file the application and to delay national phase entry until thirty months from priority, second
by 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 and thirdly in improving the quality of the search report, and from January 1, 2009, providing for a
supplemental search report carried out by a second searching authority..

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 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 added. "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."

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, Bahrein, Dominican Republic, Costa Rica, El Salvador, Oman, Guatemala, Honduras,

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Nicaragua, and Peru.26 Further details of these agreements are included in the materials on Patent Treaties.

In addition to the inclusion of provisions relating to substantive patent law included in free trade agreements, the Unites States, the
European Patent Office and the Japanese Patent Office have been cooperating on several projects for many years.27 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 work-load in each office. There are continuing efforts by all three offices.

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 in 2008 include those with Australia, Canada Denmark and
the European Patent Office. Japan has such highways with not only the United States but also, Korea, the United Kingdom, Germany and
Denmark.

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..28

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 fist 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.

26
Agreements with Colombia, Korea and Panama are still awaiting Congressional approval.
27
See the trilateral web-site created by the three offices at: http://www.trilateral.net/
28
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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