THE GLOBAL RECOGNITION OF PATENT RIGHTS

AN AGENDA FOR THE 21ST CENTURY
The Honorable James E. Rogan
Under Secretary of Commerce for Intellectual Property
and Director, U.S. Patent and Trademark Office

WIPO Conference on the International Patent System
March 26, 2002

(As Prepared for Delivery)

Good morning. I appreciate being invited to participate in this important conference on the international patent system. Having been sworn in as the United States Under Secretary of Commerce for Intellectual Property, and the Director of the U.S. Patent and Trademark Office on December 7 of last year, this forum provides my first opportunity to meet many of you and to participate in WIPO activities. I look forward to our future work together in this organization and elsewhere.

The title of today's Conference refers to "the international patent system." Although many might question whether there is any single international patent system, there can be no question that the foundation for an international system exists in the Patent Cooperation Treaty [PCT] and the Patent Law Treaty [PLT], both of which are administered by this body, and in the Agreement on the Trade Related Aspects of Intellectual Property [TRIPs Agreement], administered by the World Trade Organization.

The PCT simplifies for patent applicants the process of obtaining patent rights internationally. The PLT will simplify the process further and help to reduce costs by making patent application requirements more uniform among offices around the world. On the trade side, the TRIPs Agreement establishes minimum international standards for patentable subject matter, disclosure requirements, patent rights, limitations on those rights, and the means for enforcing those rights.

The idea of an international patent system based on mutual recognition of a single patent granted from a single application is not new. In the United States, for example, the 1966 findings of the President's Commission on the Patent System stated, "the ultimate goal in the protection of inventions should be the establishment of a universal patent, respected throughout the world, issued in the light of, and inventive over, all of the prior art of the world, and obtained quickly and inexpensively on a single application, but only in return for a genuine contribution to the progress of the useful arts.

To achieve that goal, the 1966 Commission urged pursuit of a number of activities that WIPO Members have been working on in this forum and elsewhere for at least three decades. Those activities include the international reconciliation of patent practices, the formation of regional patent systems, and a universal network of mechanized information storage and retrieval systems.

It is interesting that the reasons given by the Commission for urging establishment of such a universal patent are the same as those reflected in the Memorandum of the Director General, entitled "Agenda for Development of the International Patent System": to lower the cost for patent applicants of securing and maintaining multi-national patent protection, and to avoid duplication of the efforts of patent offices around the world that results in inefficient allocation of both financial and human resources for governments.

The application and maintenance costs of a patent are particularly burdensome for individual inventors and small businesses around the world, often precluding them from obtaining rights beyond the borders of their own countries. The duplication of effort involved in granting patents can be particularly harmful to developing and least developed countries where scientists and engineers can have more effect on economic growth working in their areas of expertise, not examining patent applications.

Just as Rome was not built in a day, we take heart that the process of constructing an international patent system, while slow, has been steady.

Recognition of the need to simplify the patent application process around the world to ensure that applicants were not disadvantaged when filing abroad spurred the WIPO negotiations that resulted in the PCT in 1970.

The 1980s saw WIPO negotiations on a treaty intended to harmonize patent laws around the world. These negotiations unfortunately failed because a number of changes demanded of the United States -- for example, surrendering our over-200 year old "first-to-invent" system, which puts a premium on original inventiveness, and replacing it with a "first-to-file" system -- were unacceptable.

The Uruguay Round of multilateral trade negotiations, which began in 1986, paralleled in part the WIPO patent law harmonization negotiations. The Uruguay Round produced the TRIPs Agreement under the WTO. TRIPs came into force in 1995, and its obligations applied to developed country members as of 1996, and developing country members in 2000.

Negotiations in WIPO in the latter half of the 1990s produced the Patent Law Treaty, which will determine the maximum procedural requirements applicants will have to meet in seeking international patent protection.

All of this work in the 1980s and 1990s helped lay the foundation for an international patent system. Now we must seek opportunities to build on that foundation. Yesterday, Commissioner Oikawa painted a dramatic picture illustrating why our work is more urgent today than a decade ago. I certainly appreciate his artwork.

Last year, the U.S. Patent and Trademark Office received more than 325,000 patent applications, up 11% from the previous year. We granted over 170,000 utility patents. Projections for this year are that we will receive 364,000 patent applications and grant over 171,000 utility patents. To handle the workload, we hired 460 examiners last year and expect to hire about 600 this year. The patent workload, combined with our trademark operations, requires a budget for this fiscal year of over $1 billion.

A little more than 45% of the patent applications the USPTO receives come from abroad. We would enjoy a significant reduction in our workload if, rather than doing our own search and examination of the applications we receive from abroad, we could rely on the searches and examinations already done by other patent offices as the basis for granting a United States patent.

To gain maximum efficiency in such a system, the substantive standards for granting patents and the basis on which searches and examinations are done should be reconciled. In addition, patent applicants around the world should have confidence that those mutually accepted standards will be applied objectively in each patent office conducting the searches and examinations. To achieve that, we have considerable work before us. The United States is committed to working with other Members of WIPO to bring about reconciled standards for searches, examinations and the granting of patents.

In 2001, almost 39 percent of PCT filings were from U.S. nationals, so we are particularly motivated to work on reforming the PCT to streamline procedures and make the process more "user friendly." To move forward, the United States has proposed a two stage process of reform. In the first stage, we proposed that the PCT be amended to simplify certain procedures and to conform the PCT to the PLT's standards. These revisions -- which could take place within the next few years -- include simplification of filing date requirements, residence and nationality requirements, and demand requirements. They also included acceptance of fees for postponing national processing, electronic publication of applications and transmission of search and examination results.

The second stage of reform envisions a much more comprehensive overhaul of the entire PCT system. We believe additional reform would go a long way toward reshaping the PCT as a vehicle for global patenting. In the context of the ongoing work in WIPO's Committee and Working Group on PCT
Reform, we are focusing on the implementation of the 20 to 30 month change for national stage entry in PCT Chapter I, a combination of search and examination, and streamlined examination report procedures.

We are committed as well to the work begun in the Standing Committee on the Law of Patents aimed at reconciling substantive patent law standards for issues such as novelty, utility, and inventiveness in order to permit mutual recognition of searches and examinations. That work, if successful, will help build a framework of trust in which mutual recognition of searches and examinations of various patent offices can be promoted.

We believe that WIPO can be most effective if its efforts toward the development of an international patent system are concentrated on PCT reform and on the work of the Standing Committee on the Law of Patents. Work in other fora also will be important for the construction of a truly international patent system. The minimum standards established by the WTO's TRIPs Agreement, for example, are building greater harmonization into patent laws among WTO Members, most of which are Members of WIPO as well.

The TRIPs Agreement requires that patents be available for inventions in all fields, with limited, clearly identified exceptions. TRIPs establishes what rights a patent must convey. It prohibits discrimination in either the availability of patents, or in the enjoyment of their rights based on the place of invention, the field of invention, or whether the relevant products are imported or locally produced. The Agreement authorizes certain limitations on rights under clearly prescribed conditions, and establishes a patent term of no less than twenty years measured from the patent application filing date. Finally, TRIPs sets standards for the enforcement of intellectual property rights of all forms, including patents.

Recognizing that different levels of development would require a staged process of implementation of TRIPs obligations, the Agreement provided for full application of obligations by developed countries one year after the WTO Agreement came into force, which was in 1996. Developing countries were given an additional four years to bring their laws into compliance. Those developing countries that did not provide product patent protection for particular areas of technology by 2000 were given an additional five years to do so.

Least-developed countries were given until 2006 to implement their obligations, and the recent Doha Ministerial Declaration of the TRIPs Agreement and Public Health has waived the patent and data protection requirements of the TRIPs Agreement for pharmaceuticals until 2016. The possibility for waiver of other obligations is also built into TRIPs for the least-developed countries.

The WIPO's International Bureau and the WTO Secretariat have been working together to provide technical assistance to developing and least-developed countries to help them implement their obligations. Developed and some developing countries also have been carrying out technical assistance programs. The United States, for example, carried out 171 programs in 2000 - 2001, reaching 110 developing and least-developed countries, and those countries with economies in transition. All of these efforts will contribute substantially to the international patent system by bringing about greater uniformity regarding the exercise of patent rights around the world, including enforcement of those rights.

In addition to work in WIPO and WTO, the USPTO is working directly with other patent offices, particularly the European Patent Office [EPO] and the Japanese Patent Office [JPO]. Earlier I mentioned that a little more than 45% of patent applications filed in the USPTO come from abroad. Approximately 37% of patent applications filings in the USPTO in 2000 were from applicants who filed first either in the EPO or the JPO. In that year, approximately 47% of EPO filings came from Japanese and U.S. applicants. The JPO received approximately 10% of its 2000 filings from European and U.S. applicants. These figures demonstrate the need for cooperation among the three offices.

Since 1983, the European Patent Office, the Japanese Patent Office and the USPTO have been cooperating with respect to the administration of their patent functions and seeking mutual benefits from workload reduction.

At the Trilateral Conference in November of last year, the three offices agreed on drafts of a Trilateral proposition for WIPO regarding electronic filing under the PCT, aimed at guaranteeing the continued harmonization of online filing software systems and recommending standards to cover all office-applicant communications.

As another example of the Trilateral activity, the three Offices also have agreed to work on a common classification as a means toward coping with increased workloads. The three Offices will work toward a common system through cooperation in reclassification projects, with concentration in the most active technology areas.

The Trilateral offices also are investigating a mechanism for exchanging priority documents for biological sequences with a human readable certification, and exploring the possibility of creating a unified database approach for storage of sequence data (including methods of disseminating the information). Likewise, where non-patent literature is concerned, the Offices have agreed to collaborate on a list of desired capabilities for presentation and searching defensive publications in electronic form and to begin an effort to share data included in non-patent literature databases.

To address the costs and workload associated with national patent systems, regional patent offices have been established by groups of countries around the world B the African Regional Industrial Property Organization [ARIPO], the Eurasian Patent Organization [EAPO], the European Patent Office [EPO], and the African Intellectual Property Organisation [OAPI]. These groups improve efficiency by providing regional searches and examinations.

These regional patent systems are a logical result of the evolution of procedures and standards among countries that eventually will reveal a high degree of commonality. Clearly, regionalization provides great benefits in terms of reducing duplication among offices and should be encouraged.

Enabling patent applicants to file patent applications electronically, and enabling examiners to search and examine electronically, obviously improves efficiency and enables the sharing of documents and information without the delays inherent in dealing with paper documents. Electronic filing and processing of patent applications should be encouraged. Our users have demanded electronic filing solutions that are compatible and inter-connectable. We must keep that demand in mind as progress is made. As far as the user interface is concerned, it should be as simple as possible to use, given the intricacies of the subject matter involved.

We also are interested in promoting information dissemination by patent offices via the Internet, including searching, ordering, and downloading documents, and information about the status of patent applications and patents. Regarding such dissemination, great strides are being made. Many industrial property offices now provide for online searching and downloading of patents they have granted and applications they have published, making the information available worldwide with the click of a mouse. The USPTO has made available on its web site all of the patents granted in the United States since 1790. We are now adding to that all of the patent applications we publish eighteen months after filing. We also should strive to facilitate the sharing of search and examination results among patent offices, preferably by electronic means, such as WIPOnet.

Where does all this leave us in our efforts to construct a truly international patent system? Obviously, it leaves us with a great deal more work to do.

And while we might not have a blueprint for what we are building, or a drawing of the finished product, we do know that we must use good materials and good construction techniques. Conferences like this provide a means for ensuring our success. By identifying and defining the issues that must be addressed, and the fora in which each of those issues should be addressed, we move one step closer to achieving our objective B a truly international patent system.It will be my pleasure, during my tenure as United States Under Secretary of Commerce for Intellectual Property to work with each of you in pursuit of that common goal.