Novelty, Inventive Step and Industrial Application; and Global Filing Procedure (toward a Single Global Patent)
Introductory note: For a brief analysis of the standard set by the TRIPS agreement about the novelty, inventive step and industrial application requirements of patentability, click HERE. This post, in turn, regards the variations that the legislations of different countries may establish on regards to those requirements of novelty, inventive step and industrial application, and how to further define them could lead to the goal of the global patent. For a short explanation on our take on what could be the advantages a global patent system and how the TRIPS PLUS ULTRA could make it possible, click HERE.
TRIPS PLUS ULTRA will be the ultimately flexibility which, because it is truly comprehensive, could allow greater harmonization (developing countries urge for flexibilities while developed countries for harmonization). Form it, and provided the TRIPS PLUS ULTRA proposal gets implemented, further benefits for developing (justice, technology transfer, orphan diseases) and developed countries (effectiveness, which will reduce the free riders problem -which is in it self unfair) could follow, and for the world as a whole (efficiency, justice, cooperation –proper exhaustion rights and properly address climate change).
Up next an analysis of what such a thing will need to be posible in regards to novelty, inventive step and industrial application requirements of patentability. Taken from a “A global solution for the protection of inventions“, pp 135-143.
“To walk toward a single global patent, only one definition regarding prior art, novelty, inventive step, and utility should be present worldwide. As will be showed, this was attempted without success by WIPO. Also to achieve the dream of a single global patent, only one administrative procedure to grant a patent and make it available in a global scale should be available. This could come to be only if there is a global administrative authority that evaluates an invention novelty, inventive step, and utility under a worldwide uniform definition of these parameters. The Patent Cooperation Treaty (PCT) of 1970, which was amended in 2001, and the Patent Law Treaty (PLT) of 2000 are examples of significant progress on harmonizing the procedures for the filing and granting of patents, but these are far from establishing a global registration procedure and do not further determine the definition of novelty, inventive step, and utility/applicability. Also, these agreements do not have the universal acceptance that the TRIPS Agreement has (see chapter 2.1. Validity)[1]”
“Future efforts should aim to build a stronger international system for granting patents. This system should be universal and definitely linked to the TRIPS Agreement. (This is not the case of the aforementioned international instruments.) If a fair system is achieved, why should a single universal patent not be established?[2] This goal still seems distant, but toward this scenario mankind should be directed under the condition that the necessary axiological (justice) correctives to the agreement currently governing the matter come to be implemented. If a just scheme comes to be, this is a dream that could be achieved. In the hypothetical system that this book proposes, the negative effect that comes from a legal monopoly will be felt proportionally by all the inhabitants of earth in relation to the economic capacity of each country and its people. Thus, to achieve a consensus on a further definition of what is novelty, inventive step, and industrial, application in a worldwide scale would be easier. An exaggerated broad scope will affect all of humanity alike.”
“The definition of what is a patent is somehow implicitly defined within the TRIPS Agreement when it determines the concepts of novelty, inventive step, and utility (industrial applicability). This is part of the heart or core of the worldwide patent. Nonetheless, the heart of the worldwide patent could be polished in a worldwide scale. What would be polished would be the outer shape of the worldwide patent because its center core is already established in the TRIPS Agreement. With proportionality present, the global polishing process of the concepts of novelty, inventive step, and usefulness (utility or industrial applicability) could prove not to be impossible, as it has been so far.[3]”
“As with the negative effects of a patent, the positive effects of this scheme will also be felt by all mankind alike if proportionality came to be. The increased investment in research and technological development and its positive impact in global welfare will be felt around the globe. Thus, mankind should promote an easier filing system for inventors. If this becomes a reality, filing and litigation costs would dramatically drop and access to a global protection could be easier. This will actually make it possible for small entrepreneurs that have independently achieved an invention to access a global protection. The objective of the patent system is to enhance research and development. Thus, a reward is given to the inventors. In order to improve the reward to the inventors, the reward should be easy to receive.”
“The failed draft of the Substantive Patent Law Treaty SPLT tried to harmonize the definition of prior art, novelty, inventive step/non-obviousness and industrial applicability/utility/usefulness, the drafting and interpretation of claims, and the requirement of sufficient disclosure of the invention. The draft covered the six issues mentioned above and also discussed the interface between the draft of SPLT and both the PLT and the PCT.[4] The initiative was abandoned because developing countries were not willing to agree to more harmonization. They had reached their limit with the TRIPS Agreement. There is not a compelling necessity to establish these issues globally because the imperative harmonization was already accomplished within the TRIPS Agreement.”
“From the point of view of the global patent’s core or heart, if an invention is not new or is obviously derived from preexisting knowledge or cannot be applied, it simply does not deserve protection. Nonetheless, by further regulating novelty, inventive step, and industrial application (applicability or usefulness), as countries are allow to, the subject matter of the patent is implicitly differentiated from one country to another. Thus, the outer shape of the patent varies. Its core remains intact, but its outer shape can vary quite a bit.”
“Even though in regard to the novelty the agreement is clear (its center core), the outer shape of this conception is left to countries’ self-determination. For an invention to be new, it should not be included in prior art. It seems like a very simple notion, but actually very different conceptions are present around the world when countries define prior art. Regarding prior art, it is important to mention what is known as “innovation universal scope”, which is a principle linked to the concept of absolute novelty based on the idea that knowledge under the current communication scenario is universal.[5] This is not only the universally accepted principle governing the concept of novelty but also the obvious basis for the legislation governing intellectual property (especially regarding patents) to be universal. Knowledge is no longer territorial. But when does knowledge become part of prior art? An oral description makes the subject part of prior art? This should be carefully defined if the international community wants to define patents globally. Global regulation should take into account a special treatment for ancestral knowledge if the definition of prior art includes oral description.”
“Decision 486 of the Andean Group determines that prior art is “everything that has been made available to the public by written or oral description, use, marketing, or any other means prior to the filing date of the patent or where appropriate, of the priority claimed” (article 16, paragraph 2 of Decision 486). This definition of prior art includes oral description. As Anne Rejnhold Jorgensen commented in her speech for the open forum on the SPLT draft, the United States and Europe have their own ways of addressing this issue. […]”
“The failed SPLT draft provided a definition of prior art in its article 8. It stated that “the prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form before the priority date of the claimed invention.” To achieve the dream of a single global patent or to take steps in that direction, an even clearer international regulation should be produced.”
“The concept of inventive step is also very clear in the TRIPS, but around it different internal interpretations are present (the outer shape of the patent). As determined by the TRIPS Agreement, a member may consider that the term inventive step is synonymous with non-obviousness, whose approach contains the same purpose. How different national authorities interpret this concept when they are examining an application and its claims is where disparities appear. Reichman thinks that non-obviousness should be applied in a strict way and that “therefore, patent protection should only be provided for inventions that are truly innovative inventions and will enrich the present state of the art beyond the obvious” (Reichman 2006).”
“The issues of inventive step and novelty definition are related with the strictness of the conception of prior art. […]”
“In regard to industrial applicability, utility, or usefulness, Bercovitz states that an invention is “an idea that is a rule for human actions which indicates a solution to a technical problem” (Bercovitz, 1969, 73). By further defining it, scientific theories and mathematical methods could be or not admitted as patentable. The same happens with diagnostic, therapeutic and surgical methods for the treatment of humans or animals. Notwithstanding the possibility that countries have to exclude from patentability the mathematical, diagnostic, therapeutic and surgical methods and scientific theories (see annex B), if industrial applicability is defined broadly (if these exceptions are not established) they could deserve protection.”
[1] “On June 2, 2000, the Patent Law Treaty (PLT) was signed by 43 countries, with the support of the United States and the European Patent Office. The PLT does not contain substantive provisions. It rather harmonizes procedural requirements and steps: what may be required to obtain a filing date (Article 5), what may be required relating to the form and content of an application (Article 6), representation before a patent office (Article 7), various issues regarding communications (Article 8), what constitutes sufficient notification (Article 9), validity of patents if not in compliance with certain formal requirements (Article 10), relief in respect of time limits (Article 11), reinstatement of rights (Article 12), correction or addition of priority rights (Article 13). The PLT provisions should help to reduce the risk of errors by patent offices, and the time and costs of procedures for patent applicants, thereby facilitating the acquisition of patent rights internationally. The PLT also provides a clear linkage to the PCT for current and any future patent law harmonization (Article 16).” An agenda for patent amendment and harmonization for developing countries (Correa 2006).
[2] As an example of a study about some difficulties in terms of the harmonization of procedures for granting patents, it is worth mentioning the one from Albert Colas and Charles Reibel. This study addresses the potential difficulties of conceiving a patent-granting system that goes beyond the territory of each country because of the fact that the different visions regarding patentability tests, subsequently related to the granting of a patent, are difficult to overcome. Surely human intellect could find a way to overcome these difficulties if this suits its interests (Colas and Reibel 2012, 581-596).
[3] The Standing Committee on the Law of Patents (SCP) of WIPO, generated a draft named Substantive Patent Law Treaty (SPLT). Discussions on the SPLT draft started in May 2001 and were put on hold in 2006. http://www.wipo.int/patent-law/en/scp.htm
[4] For further information you can consult the following webpage: http://www.wipo.int/patent-law/en/harmonization.htm.
[5] It has so been determined, for example, by the Cartagena Agreement Court of Justice (currently the Andean Court of Justice), in process 1-AI-96, default action filed by the Board of the Cartagena Agreement against Ecuador, p. 40. “Concerning innovation the Court has fathered as an essential factor and has understood that the criteria of innovation result from the fact that the product that will be patented is not in the prior state of art, adopting the criteria of the absolute novelty embraced by most of the literature. […] The concept of absolute novelty of an invention involves that for an invention to be new and not in the state art, it cannot have been granted within the territory where the patent is applied for or in any other country.”