Substantive Patent Law Treaty

7/30/2019 Substantive Patent Law Treaty

1/30

Prepared by: Ronak KaranpuriaLL.M. 2nd Trimester

I.D. No. 534

Under the Supervision of Prof. T. Ramakrishna


2/30

Represents an attempt to pursue a deep

harmonization of both the law and practice

concerning not just the drafting, filing, and

examination of patent applications, but also the

cornerstone requirements of patentability.

SPLT negotiations cover three separate legal documents:

the draft Treaty (i.e. the SPLT),

the draft Regulations under the SPLT and

the draft Practical Guidelines


3/30

HARMONISATION PROCESS

1. To establish a uniform set of substantive standards

2. Applicability both to national and regional laws & practice,and to the international framework under the PCT

REASON:

Dividing Line b/w formality requirement & substantive

requirement is not clear which give rise to thriving counterfeit

& piracy trade


4/30

Unification of Patent Law

1. Simplify and streamline procedures

2. Reduce costs for applicants

3. Enable Offices and Authorities to meet workloadand maintain quality

4. Avoid duplication of work among Offices

5. Meet needs of large, medium and small Offices

6. Balance applicant and third party interests

7. Assist developing countries, especially with IT

8. Interface b/w PCT & PLT


5/30

SPLT A.3 : Contracting Party shall apply the provisions of this Treatyand the Regulations:

(i) to national applications

(ii) to regional applications

(iii) to international applications

(iv) to patents which have been granted with effect for that ContractingParty.

(2) [Exceptions] This Treaty and the Regulations shall not apply to the

applications and patents that are prescribed in the Regulations.

Rule 3: Exceptions Under Article 3(2)The applications and patents referred to in Article 3(2) are:

(i) subject to Article 1(ii), provisional applications (ii) applications for re-

issue.


6/30

1. Prior Art [A.8(1)]2. Novelty [A.12(2)]

3. Grace Period [A.9(1)]

4. Inventive Steps [A.12(3)]5. Sufficient disclosures [A.10]

6. First to file, early publication

7. Interface b/w PCT & PLT

8. Invalidation of claim or patent (A.14)

SPLT does not cover post grant phase left to

national laws


7/30

DANGERS OF HARMONISATION PROCESS

1. Safeguarding public interest flexibility - IDEAL SYSTEM

2. Transfer of technology A.66 & A. 67 of TRIPS

3. Curbing anti-competitive practices, and

4. Exporting a Dysfunctional system

- Narrow meaning - To pull up ladder and stop others joining them

5. Disclosure disharmony- Person skilled in art varies with sectors & skills in the country of

application

-According to the need of technical field & nature of invention

-Disclosure of the origin of genetic resources in patent applications.6. Exclusion from patentabilitymany ideas are filtered out by SPLT

-difficult to define what is technical

-EPC patent are not given for business method, contrary to SPLT

7. Industrial application varies different countriespatent rejection

8. Business interest are different


8/30

Paris ConventionNational treatment, right of priority & common rules

European Patent ConventionCentralized filing, examination & granting procedures even harmonized

many substantive patent law like after grant protection but limited to

European member state

Patent Cooperation treaty (PCT)Centralized filling & a common preliminary examination procedure for

120 contracting states or International application.

Patent Law Treaty (PLT)Harmonize formal requirements set for national process

Substantive Patent Law Treaty (SPLT)Substantive harmonization of patent law

Harmonizing concept of novelty, inventive step & utility


9/30


10/30

SPLT (SCP/10/4) Art.8 (1)

The prior art with respect to a claimed inventionshall consist of all information which has been madeavailable to the publicanywhere in the world in any form[, as prescribed in the Regulations, ]before the priority date of the claimed invention.

SPLT (SCP/10/5) Rule 8 (2) Information shall be deemed to be made availableto the public, if there is areasonable possibility that it could be accessedby the public. The reasonable possibility that information could be accessed bythe public shall be considered to exist if it is possible for the public to gainaccess to the content of the information & to acquire possession of that contents

The term priorarthas not been defined - Indian Patents Act, it shall be determinedby the provisions of sec- 13 read with the provisions of sec- 29 to 34 of the Act.

Advantage of SPLT:1. Instances Frivolous patents get reduced beneficial for India eg. Neem

2. Removal of Hilmer Doctrine : According to this doctrine the application

will have the prior art effect on the date of filing in US only.TRIPS is silent on the issue of Prior Art

#1 SPLT & TRIPS: WHERE THEY DIFFER & WHY IT MATTER?

Prior Art


11/30

Questions

Q1. What does availability to the public mean? If a reasonablepossibility to

access the information is enough to qualify the information as being prior art,how is the term reasonablepossibility interpreted?

Q2. What does thepublic mean? Could it be only one person? Is it a person

skilled in the art or could it be any person?

Q3. (1)Whether information disclosed on the Internet constituted prior art?

(2)Is the ability to search [the web page] by search engine relevant to thedetermination of availability/accessibility of Internet disclosures?

(3)What would be the sufficient duration on internet that would constitute prior

art?

(4)Whethere-mails could constitute prior art?

Q4 Whether the secret prior art or disclosure in pending application will beconsidered as prior art for assessing inventive step or not?

Q5 While assessing even the novelty some country consider the whole content

of the prior application (US, EPO, Japan)and some just compare the claims of

later to the claims of earlier to check if the claims are coterminous (India)?


12/30

IF the current draft is adopted- The member states should treat all kind of oral/written

information available to the public anywhere in the

world as a prior art.

- No restrictions of geographical location

- No time limit is stipulated for documents or othersource of information.

- Harmonisation would eliminate the flexibilities that

patent offices in individual countries have been

exercising while examining patent claims


13/30

A.8(2) SPLT [Prior Art Effect of Certain Applications](a) The following subject matter in another application (the otherapplication)

Shall also form part of the prior art for the purpose of determining the novelty of

a claimed invention, provided that the other application or the patent granted

thereon is made available to the public subsequently by the Office

[, as prescribed in the Regulations]:


Prior Art

--------SECRET PRIOR ART OR FICTIONAL PRIOR ART------------- Draft SPLT A.8(2) relates to the prior art effect of earlier-filed applications as

there could be no justification for the automatic prior art effect of International

patent applications in the absence of a single patent grant covering all PCT

contracting states.

It was argued that the effect would be damaging to industry.

A patentee would be able to invalidate later-filed patents dated prior to

publication of the PCT application in over one hundred countries, even if he

had no intention of proceeding in those countries.


14/30

Questions

What are the contents of the earlier application which should be

considered?

What should be the effect of such an earlier application? What date should be considered as the date of forming prior art of

an earlier application?

Does the origin of the earlier application play a role?

Does it make a difference if the earlier application was not made

by a third party?


15/30

SPLT Art. 12 (2) [Novelty] A claimed invention shall be novel. It shall beconsidered novel if it does not form part of the prior art[, as prescribed in the

Regulations]

SPLT Regulations SCP/10/3 Rule 14: Any item of prior art relevant to the

determination of lack of novelty (i)may only be taken into account

individually and may not be combined with other items of prior art,

TRIPS is silent on the issue of Novelty


Novelty

Q.1 Simple novelty is not sufficient, and a qualified or enhanced novelty (non-

obviousness) is necessary, why should one try to determine the smaller concept

embodied in the broader one?Q.2 Does Draft SPLT suggest inclusion of any traditional knowledge existing in

the field of interest ?

Q.3 In deciding the novelty the time frame is an interesting issue. According to

PCT regulations Rule 34, the minimum documentation with regard to national

patent documents includes searches in patent documents issued in a number ofcountries from 1920 and forward.


16/30


A.27.1 TRIPSstates patent..in all field of technology A.12 of the draft SPLT states that patentable subject matter shall include

products and processes that can be used inany fieldof activity

eg. Software, business models, research tools get patentable but notpatentable in many countries yet.

Indian Patent Act Sec- 3,4 (Contrary)

TRIPS: freedom to national patent subject to three step patent criteria

SPLT : uniform standards across countries

Exceptions

In contrast to A. 27(2)(3) exceptions in TRIPS, the exceptions to patentability proposed under A.12(1)(b) SPLT are limited to mere discoveries,

abstract ideas, scientific and mathematical theories, laws of nature and

purely aesthetic creations & in A. 2(2), 13(4) & 14(3) of SPLT which says

Nothing in this Treaty & the Regulations shall limit the freedom of a

Contracting Party to .. protection of genetic resources, biologicaldiversities, traditional knowledge & the environment.]

Grounds for patentability


17/30


Industrial application/Utility

A.12(4) Formulations made under Draft SPLT that an invention would beconsidered to be industrially applicable are:(1) If it "can be made or used for exploitation in any field of (commercial) /

(economic)activity".(2)That can be made or used in any kind of industry. "the term industry

shall be understood in its broadest sense, as in the Paris Convention".(3)That industrially applicable inventions should have a specific,

substantial and credible utility.

Most Countries proposed: industrial applicability of an invention as acriterion

US, Canada & Australia : use the criterion of utility instead

Harmonisation of industrial applicability is a misnomer to say asrequirements of the industrial utility differ among the countries that havebeen persistent towards set standard defined objectives.


18/30


Disclosure Norms

Article 10 Enabling Disclosure :

The application shall disclose the claimed invention in a manner sufficiently

clear and complete for that invention to be carried out by a person skilled in

the art. The disclosure of the claimed invention shall be considered sufficiently

clear and complete if it provides information which is sufficient to allow that

invention to be made and used by a person skilled in the art on the filing date,

without undue experimentation [as prescribed in the Regulations].

These conditions regarding disclosure essentially correspond with the conditions

That have been set out in Article 29 of the agreement on TRIPS.

The approach followed in the SPLT would thus directly conflict with theproposals being made by developing countries to the TRIPS Council.


19/30

Proposed by Developing countries:(i) Disclosure of the source and country of origin of the biological resource &

of the traditional knowledge used in the invention;

(ii) evidence of prior informed consent through approval of authorities under the

relevant national regimes; and(iii) evidence of fair and equitable benefit sharing under the national regime of

the country of origin.

As regards the term 'source', the broadest possible definition was proposed.

It was clarified that the term "not only includes other terms used in this contextsuch as 'origin', 'geographical origin', 'country of origin of genetic resources' or

'Contracting Party providing genetic resources,but also any other source such as

publications in scientific journals or books, databases on traditional knowledge.


Disclosure Norms


20/30

Advantage of Disclosure

To prevent grant of bad patents

To promote legal certainty

Revocation of erroneously granted patent is expensive

It help to build database which act as a aid prior art

information

Crucial factor in determination of patentability of

biotechnological inventions

Q1. Where a disclosure was made in non-documentary form, such as by

oral communication, by display or through use, what degree of evidence

is required to prove the timing and the contents of such non-

documentary disclosure? What are the standards applied under theapplicable law?


21/30

First to file versus first to inventGrace period"

Introduction of GracePeriod ? 12/6 monthGP from disclosure topriority date (NOTlocal filing date)

SPLT Art.9(1): An item of prior art with respect to a claimed invention shallnot affect the patentability of that claimed invention, in so far as that item

was included in the prior art on a date during the [12] [six] monthspreceding the prior date of the claimed invention,i).by the inventor,ii). by an Office and the item of prior art was contained..

ii). SPLT Art. 9 (2) [Invoking Grace Period] Alternative A/B

Introduction of Grace Period12/6 month GP from disclosure to priority date (NOT local filing date)iii). SPLT Art. 9 (4) [Third Party Right] Alternative A/B


22/30

IF the current draft is adopted

The member countries should have a grace period during the 12

months preceding the priority date (NOT local filing date) of the

invention.

Many member countries should enlarge the scope of the grace

period to include all kinds of the disclosure by the

inventor/applicant such as commercial use.

Q.1 Publication by applicant prior to filing date anywhere in the world may

defeat the novelty of same applicant s invention in a country which does not

provide grace period ?

Q.2 First to file system the prior art is considered to be the disclosure available

to the public before the filing date, where as in case of first to invent system thecut off date is the date of invention?

Q.3 Should third party rights, as they relate to grace period disclosures, be

mandatory, optional or left unmentioned?


23/30

Inventive Steps"

SPLT Art. 12 (3) [Inventive Step/Non-Obviousness] A claimed

invention shall involve an inventive step. It shall be considered toinvolve an inventive step (be non-obvious) if, having regard to the

differences and similarities between the claimed invention and the

prior art as defined in Article 8(1), the claimed invention as a whole

would not have been obvious to a person skilled in the art at the claim

date of the claimed invention[, as prescribed in the Regulations].

Indian Patent Act - Sec-2(ja)

inventive stepis one which makes the invention non-obvious to aperson skilled in the art. In other words, if the invention is obvious to

the person skilled in the art, it cannotbe said to involve an inventive

step. After the Amendment in 2005, the definition ofinventive step has

been enlarged to include economic significance of the invention as well.

Fl ibili i N i l P li i P id d


24/30

Flexibility in National Policies Provided

in TRIPS to be violated by SPLT

1. To promote public interest and health concern asprovided in A.8 of TRIPS to give right to member

countries is prejudice to their national policy

2. Provisions are controversial and political in nature

1. Grounds for refusal to claimed invention (A.13)2. Grounds for invalidation or revocation of claim or granted patent

(A.14)

3. Violates Doha Declaration

4. PCT Article 27(5) allows a Contracting State to apply any

substantive conditions of patentability as it desires during the

national phase.


25/30

Invalidation of granted patents or claim (A.14)

[Grounds for Refusal of a Claimed Invention] [A.13(1)]:

An application shall be refused where the Office finds that such application or a

claimed invention in the application does not meet any of the following

requirements:

(i) the applicant does not have the right to the patent referred to in Article 4;(ii) the claimed invention does not meet the requirements of Articles 6, 11(2)

& (3) & 12;

(iii) the application does not meet the requirements of the Patent Law Treaty,

as implemented in the applicable law, and of Articles 5 and 10; or

(iv) an amendment or correction results in a disclosure as prohibitedby Article 7(3).


26/30

Interpretation of Claims

Q.1 Whether for the purpose of determining the scope of protection conferred bythe patent, due account shall be taken of elements which are equivalent to the

elements expressed in the claims.

Q.2 What should be procedures for claim interpretation for special types of claims,

such as means-plus-function claims, product-by-process claims, and claims

associated with use?

Q.3 To Identify the notional person skilled in the art and identify the relevant

common general knowledge of that person?

Q.4 To Identify what, if any, differences exist between the matter cited as forming

part of the state of the art & the inventive concept of the claim?

To interpret claims in practice is always a disputable problem for each

country to clarify rights & infringement.

This particular aspect is related to infringement only.A.11(4) Draft SPLT [Interpretation of Claims]

(a) The scope of the claims shall be determined by their wording. The description

the drawings, as amended or corrected under the applicable law, and the general

knowledge of a person skilled in the art on the filing date shall[, in accordance with

The Regulations,] be taken into account for the interpretation of the claims.


27/30

1. Developing countries & Least Developed

Countries are struggling even to implement TRIPS

provisions?

2. SPLT would shrink the flexibilities present in

TRIPS?

3. Limits on the freedom of countries to act as theysee fit in this field?


28/30


29/30

NAPOLEON BONAPARTE SAID

"NOTHING IMPOSSIBLE IN LIFE

BUT?


30/30

[email protected]
mailto:[email protected]:[email protected]

Substantive Patent Law Treaty

Documents

Transcript of Substantive Patent Law Treaty