PATENTS / INTERNATIONAL / EXAMINATION

A View towards the Global Patent: Mutual Exploitation of Examination Results

AIPPI Journal, Vol 27 No 1, January 2002

Setsuko Asami

This article considers measures enabling applicants for patents to obtain international protection more easily; lightening the examination workload of patent offices; and reforming the examination of international applications. The author considers the limitations of currewnt international laws in this field - the Paris Convention, the Patent Cooperation Treaty and the TRIPS agreement - and concludes that international trends in patent applications call for a global system. He emphasizes the burden, especially on the United States Patent and Trademark Office and the European Patent Office, due to the increase in examinations, as well as the burdens of procedures and the costs to applicants. He looks at some of the methods of tackling the problem, such as the establishment of regional patent systems (like the European Patent system), which has some drawbacks, possibly even delaying global harmonization of patent law; the "validation system", under which non-European Patent countries unilaterally and automatically recognize patents granted by the European Patent Office and grant the same rights; and the "modified substantive examination system", under which patent rights are granted after a simplified examination following the applicant's submission of affirmative examination results from another patent office. The author believes that, while there is a case for a World Patent Treaty, it "would be better not to have a World Patent Office in a single location, but to have the duties of examination shared by several reliable patent offices". This will take time: meanwhile, to prevent an otherwise inevitable overload of existing patent offices, the author proposes that a system should be introduced for the mutual exploitation of examination results. The system is illustrated in the article by flow charts according to whether the Paris Convention route or the PCT route is followed. After the Substantive Patent Law Treaty has been concluded, the mutual recognition of examination results will represent the form which mutual exploitation will then take: this will lead to some diminution of national authority, but is justified by the needs of international stability and order. After this constructive discussion, the author ends on a cautionary note. "In this article, I have focused my discussion on the establishment of rights; however, tru unification cannot be achieved unless there is unification in the handling of patents after rights have been established … it will be necessary to continue discussion … to make consistent judicial interpretation of rights and requirements for infringement." [20061]